[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2002]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR2.35]

[Page 271]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
                         DEPARTMENT OF COMMERCE
 
PART 2--RULES OF PRACTICE IN TRADEMARK CASES--Table of Contents
 
Sec. 2.35  Adding, deleting, or substituting bases.

    (a) Before publication, the applicant may add or substitute a basis, 
if the applicant meets all requirements for the new basis, as stated in 
Sec. 2.34. The applicant may delete a basis at any time.
    (b) An applicant may amend an application that is not the subject of 
an inter partes proceeding before the Trademark Trial and Appeal Board 
to add or substitute a basis after the mark has been published for 
opposition, but only with the express permission of the Commissioner, 
after consideration on petition. Republication will be required. The 
amendment of an application that is the subject of an inter partes 
proceeding before the Board is governed by Sec. 2.133(a).
    (c) When the applicant substitutes one basis for another, the Office 
will presume that there was a continuing valid basis, unless there is 
contradictory evidence in the record, and the application will retain 
the original filing date, including a priority filing date under section 
44(d), if appropriate.
    (d) If an applicant properly claims a section 44(d) basis in 
addition to another basis, the applicant will retain the priority filing 
date under section 44(d) no matter which basis the applicant perfects.
    (e) The applicant may add or substitute a section 44(d) basis only 
within the six-month priority period following the filing date of the 
foreign application.
    (f) When the applicant adds or substitutes a basis, the applicant 
must list each basis, followed by the goods or services to which that 
basis applies.
    (g) When the applicant deletes a basis, the applicant must also 
delete any goods or services covered solely by the deleted basis.
    (h) Once an applicant claims a section 1(b) basis as to any or all 
of the goods or services, the applicant may not amend the application to 
seek registration under section 1(a) of the Act for those goods or 
services unless the applicant files an allegation of use under section 
1(c) or section 1(d) of the Act.

[64 FR 48920, Sept. 8, 1999]

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