TMEP 806.02(b): Applicant May File Under Both §1(a) and §1(b) in the Same Application
October 2017 Edition of the TMEP
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806.02(b) Applicant May File Under Both §1(a) and §1(b) in the Same Application
An applicant may rely on both §1(a) and §1(b) of the Trademark Act in the same trademark or service mark application, but not for identical goods or services. 37 C.F.R. §§2.34(b); 2.86(c). However, the applicant may assert a §1(a) basis for some of the goods or services and a §1(b) basis for other goods or services in the same application. This may occur in either a single or multiple-class application. 37 C.F.R. §2.34(b).
When the applicant asserts both §1(a) and §1(b) as bases for registration in the same application, the USPTO will publish the mark for opposition and then issue a notice of allowance ( see TMEP §1106.01) if there is no successful opposition. The goods/services/classes for which a §1(a) basis is asserted will remain in the application pending the filing and approval of a statement of use for the goods/services/classes based on §1(b), unless the applicant files a request to divide. See TMEP §§1110–1110.11(a) regarding requests to divide applications. If the applicant fails to timely file a statement of use or request for an extension of time to file a statement of use in response to a notice of allowance, the entire application will be abandoned, unless the applicant files a request to divide before the expiration of the deadline for filing the statement of use and notifies the examining attorney that the request has been filed. TMEP §806.02(d).