Petition to Director Granted

United States Patent and Trademark Office (USPTO)

PETITION TO DIRECTOR GRANTED

Issue date:  May 8, 2023

The United States Patent and Trademark Office (USPTO) received a petition to the Director on April 18, 2023, for consideration of an amendment to the basis for registration of the above-identified trademark after publication. The petition is granted. 37 C.F.R. §2.146(a)(3). 

FACTS

Petitioner filed the application on February 14, 2022, 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 3, 2023. The USPTO received this petition on April 18, 2023, requesting that the application be amended to substitute Trademark Act Section 44(e) as the basis for registration. 15 U.S.C. §1126(e). Petitioner has submitted a true copy, a photocopy, a certification, or a certified copy of the full force and effect registration in their country of origin, including an English translation, if necessary.

DISCUSSION

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

Petitioner requested to substitute Section 44(e) as the basis for registration and has submitted the foreign registration. Therefore, if the amendment is accepted, the Section 1(b) basis will be deleted and the mark will be republished for opposition based solely on Section 44(e).

DECISION

The petition is granted. Jurisdiction will be restored to the trademark examining attorney to examine the amendment substituting Section 44(e) as a basis for registration in accordance with the procedures set forth in TMEP Sections 1107–1107.01. 

/Jolie Washington/

Paralegal Specialist

Office of the Deputy Commissioner

for TM Exam Policy

jolie.washington@uspto.gov

571-272-9583