Petition to Director Granted

United States Patent and Trademark Office (USPTO)

PETITION TO DIRECTOR GRANTED

Issue date:  November 17, 2022

The United States Patent and Trademark Office (USPTO) received a petition to the Director on October 31, 2022, for consideration of an amendment to change the basis for registration of the above-identified application. The petition is granted. 37 C.F.R. §2.146(a)(3).

FACTS

Petitioner filed the application on November 25, 2020, based on a bona fide intention to use the mark in commerce. 15 U.S.C. §1051(b). The mark published for opposition on January 25, 2022, and a notice of allowance (NOA) issued on March 22, 2022. Petitioner has filed first request(s) for extension of time to file a statement of use (extension request(s)) through March 22, 2023. See 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(c); Trademark Manual of Examining Procedure (TMEP) §1108. 

The USPTO received this petition on October 31, 2022. Petitioner requests that the basis of the application be amended to Section 44(e) of the Trademark Act. 15 U.S.C. §1126(e). Petitioner further requests that the Section 1(b) basis be maintained pending a decision on the amendment to Section 44(e) by the trademark examining attorney. Petitioner has also provided true copy, a photocopy, a certification, or a certified copy of the foreign registration, including an English translation, if necessary. TMEP §806.03(j)(ii).

DISCUSSION

An applicant may request post-publication amendments adding or substituting a new statutory basis for registration by filing a petition to the Director. 37 C.F.R. §2.146(a)(3); see also 37 C.F.R. §2.35(b)(2). If the petition is granted, the application is returned to the trademark examining attorney for examination of the new basis for registration. TMEP §§1107–1107.01. If the new basis is accepted, republication for opposition is required. 37 C.F.R. §2.35(b)(2); TMEP §1505.03(a); see also In re Monte Dei Maschi Di Siena, 34 USPQ2d 1415, 1416 (Comm’r Pats. 1995).

In this case, petitioner has provided the foreign registration and indicated that the Section 1(b) filing basis is to remain pending acceptance of the Section 44(e) filing basis by the trademark examining attorney. Therefore, the Director will invoke supervisory authority to allow the trademark examining attorney to review the request to substitute Section 44(e) as the basis for registration. 37 C.F.R. §§2.35(b)(2), 2.146(a)(3).

DECISION

The petition is granted. The application will be returned to the trademark examining attorney to examine the amendment to the basis, in accordance with the procedures set forth in TMEP Sections 1107–1107.01. If the Section 44(e) basis is acceptable, the trademark examining attorney will delete the Section 1(b) basis and republish the mark for opposition.

Statement of Use Required

It is noted that petitioner requested to maintain the Section 1(b) basis pending consideration of the amendment to substitute a Section 44(e) basis. Petitioner is advised that the due date for filing a statement of use (SOU) or extension request may be prior to the examination of the amendment to add a Section 44(e) basis. As such, an SOU or extension request is due no later than March 22, 2023 if the Section 1(b) basis is not already deleted. 15 U.S.C. §1051(d)(4); 37 C.F.R. §§2.88-2.89; TMEP 806.03(j)(ii). If an SOU or extension request is not timely filed, the Section 1(b) basis will be deleted. See generally TMEP §806.

/Jolie Washington/

Paralegal Specialist

Office of the Deputy Commissioner

for TM Exam Policy

jolie.washington@uspto.gov

571-272-9583