You may amend the application filing basis to intent to use under Section 1(b) to overcome the specified refusal, if the refusal is based on the specimen of record and/or you need additional time to obtain proper evidence to support a specific response option (e.g., to support a Section 2(f) claim of acquired distinctiveness). If you have filed an amendment to allege use (AAU), you may withdraw the AAU; the AAU fee will not be refunded. If you have filed a statement of use (SOU) after a notice of allowance issued, you may not amend to an intent-to-use basis; an SOU may not be withdrawn.
Note: If you amend to an intent-to-use basis or withdraw the AAU, registration will not be granted until you amend the application to claim use in commerce by filing an acceptable allegation of use (another AAU or an SOU) with (1) a specimen showing proper use in commerce and (2) the required fee, currently $100 per class. If you submit the same specimen, the trademark examining attorney will likely issue the same refusal again.
Responding Online Using the Trademark Electronic Application System (TEAS): Below are instructions for how to use TEAS to respond to such issue in an Office action. The instructions below presume that you will be using a TEAS form to respond online to more than one issue. To respond using TEAS, you must fill out the form to address all issues in the Office action and, at the end of the form, the correct party must properly sign it. For more information about who may sign a response, please review your Office action.
To respond to this issue in a nonfinal Office action, use the TEAS "Response to Office Action" (ROA) online form. To respond to this issue in a final Office action, use the TEAS "Request for Reconsideration after Final Action" form. These forms will include the appropriate required statements and supporting declaration language referenced in the Office action. The instructions provided in both forms are the same. For technical assistance with these forms, contact TEAS@uspto.gov.
TEAS online form instructions: To amend to Section 1(b), (1) answer "Yes" to form wizard question #2; and then, continuing on to the next page in the form, under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following for each relevant class for which the basis is being amended: (2) check the box next to the following statement: "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored."; (3) under "Filing Basis Section 1(a)," uncheck the box for "Filing Basis Section 1(a)"and delete any information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce text boxes; and (4) check the box next to "Filing Basis Section 1(b)."
WARNING: When amending to Section 1(b), the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section. The declaration in the TEAS online form should not be bypassed, doing so will likely result in the amendment being unverified and unacceptable.
TEAS online form instructions: To withdraw an AAU, answer "Yes" to form wizard question #3. Continuing on to the next page of the form, in the "Additional Statement(s)" section, check the box for "Miscellaneous Statement," and enter in the text field for the "Miscellaneous Statement" that "Applicant withdraws the amendment to allege use."