To overcome a specimen refusal or an ornamental refusal, you may amend your filing basis to intent to use under Section 1(b), if a statement of use (SOU) has not been filed.
You will not receive a registration until you amend your filing basis back to use in commerce under Section 1(a). To do this, you must file an acceptable allegation of use (another amendment to allege use (AAU) or statement of use (SOU)) with:
(1) a proper specimen that does not show ornamental use and
(2) the required fee
If you submit the same specimen, the examining attorney will likely issue the same ornamental refusal again.
If you have already filed an AAU, you may withdraw the AAU; the AAU fee will not be refunded. However, as stated above, amending to an intent-to-use basis is not an option if you have filed an SOU after issuance of the notice of allowance. You may not withdraw an SOU.
For more information on amending the basis, see 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; and TMEP §§806.03(c), 1103.
TEAS instructions for amending your filing basis to “intent to use”:
To respond to a nonfinal office action, use the Response to Office Action (ROA) online form. To respond to a final office action, use the Request for Reconsideration after Final Action online form. 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.
Once you have opened the appropriate TEAS form:
(1) Answer "Yes" to form wizard question #2.
(2) Proceed to the next page in the form and complete steps 3-6 listed below for each relevant class for which the basis is being amended.
(3) Under "Classification and Listing of Goods/Services/Collective Membership Organization," select the following statement: "Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored."
(4) Within the "Classification and Listing of Goods/Services/Collective Membership Organization" section, under "Filing Basis Section 1(a)," uncheck the box for "Filing Basis Section 1(a)."
(5) Delete the information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce textboxes.
(6) Check the box for "Filing Basis Section 1(b)."
(7) Once all relevant classes have been addressed, click the “Submit” button.