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 evidence of secondary source or acquired distinctiveness. If you have filed an amendment to allege use (AAU), you may withdraw the AAU; the AAU fee will not be refunded. You may not, however, amend to an intent-to-use basis if you have filed a statement of use (SOU) after a notice of allowance issues; an SOU may not be withdrawn.
NOTE: If you amend to an intent-to-use basis or withdraw the AAU, registration may not be granted until you amend the application back to use in commerce under Section 1(a) and prove that you are using the trademark in commerce by filing an acceptable allegation of use (another AAU) with (1) a specimen showing proper non-ornamental use in commerce and (2) the required fee. If you submit the same specimen, the examining attorney will likely issue the same ornamental refusal again.
For more information on amending the basis, see 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §§806.03(c), 1103.
WARNING: This option does not apply to an application based on Section 66(a).
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 online 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. If you need technical assistance with TEAS, contact TEAS@uspto.gov.
NOTE: The TEAS online form requires two signatures for amending the filing basis - one in the Declaration Signature section and one in the Response Signature section. The same individual may not always have the authority to sign in both places. The declaration in the TEAS online form should not be bypassed, doing so will likely result in the amendment being unverified and unacceptable.
Once you have opened the appropriate TEAS form:
To amend to Section 1(b):
- Answer "Yes" to form wizard question #2 for changing filing basis. Continuing on to the next portion of the form, for each relevant class:
- Under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," 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 or foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored."
- Under "Filing Basis Section 1(a)," uncheck the box for "Filing Basis Section 1(a)."
- Delete any information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce textboxes.
- Check the box next to "Filing Basis Section 1(b)."
- Once all relevant classes have been addressed, click the “Continue” button.
To withdraw an AAU:
- Answer "Yes" to form wizard question #3 for a miscellaneous statement.
- Continuing on to the next page of the form, in the "Additional Statement(s)" section, check the box for "Miscellaneous Statement."
- 1.Enter a statement in the text field for the "Miscellaneous Statement" that "Applicant withdraws the amendment to allege use."
1.Click the “Continue” button.