[E-trademarks] 44(e) basis not perfecting and NOA issuing

[Trademarks Admin]

Hello,

We have had a couple of cases now recently where we filed an RSI or
responded to an office action in applications with a 44(d)/1b basis
specifically requesting that the foreign registration be entered and the
1(b) basis be deleted (i.e., this option: *The applicant requests that the
examining attorney delete the Section 1(b) basis for the goods and/or
services that the foreign registration submitted herewith covers, IF the
Section 44(e) basis is accepted for those goods and/or services) *only for
a NOA to then issue.

I have tried contacting the Examiner/Managing examiner and have not gotten
a response, but the Examiner had indicated it was correct when she
processed it but something happened after and then stopped responding to
emails.

How do I go about getting the NOA cancelled so the case can proceed to
registration? Seems to be some glitch in how things are being handled on
the USPTO side and calling the Assistance Unit did not provide any help.


*I am thinking I need to file this "Post-Approval Amendment" form, but
wanted insight as to whether this has been happening to others. Seems like
this is a major downside to including the 1b basis as a back-up but some
foreign clients prefer that we include both. *

*Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment Form*
<https://teas.uspto.gov/office/ppa/>


Caitlin
Trademark Paralegal
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