To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`OMP RACING S.P.A. (PTO-TM-Email@rfem.com)
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`TRADEMARK APPLICATION NO. 90097653 - LINEA SPORT - 4863-101
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`4/13/2023 6:40:16 PM
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`ECOMPET
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`United States Patent and Trademark Office (USPTO)
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`U.S. Application Serial No. 90097653
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`U.S. Registration No.
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`     
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`Mark:  LINEA SPORT
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`Correspondence Address:        E. Anthony Figg
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`       ROTHWELL, FIGG, ERNST & MANBECK, PC
`       Suite 900 East
`       901 New York Avenue, N.W.
`       WASHINGTON DC 20001
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`Owner:  OMP RACING S.P.A.
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`    
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`Reference/Docket No. 4863-101
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`Correspondence Email Address:        PTO-TM-Email@rfem.com
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`   
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`PETITION TO DIRECTOR GRANTED
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`Issue date:   April 13, 2023
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`The United States Patent and Trademark Office (USPTO) received a petition to the Director on March 24, 2023, for consideration of an
`amendment to change the basis for registration of the above-identified application. The petition is granted. 37 C.F.R. §2.146(a)(3).
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`FACTS
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`Petitioner filed the application on August 6, 2020, based on a bona fide intention to use the mark in commerce. 15 U.S.C. §1051(b). The mark
`published for opposition on January 4, 2022, and a notice of allowance (NOA) issued on March 1, 2022. Petitioner has filed two request(s) for
`extension of time to file a statement of use (extension request(s)) through September 1, 2023. See 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(c);
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`Trademark Manual of Examining Procedure (TMEP) §1108.  
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`The USPTO received this petition on March 24, 2023. Petitioner requests that the basis of the application be amended to Section 44(e) of the
`Trademark Act. 15 U.S.C. §1126(e). Petitioner further requests that the Section 1(b) basis be maintained pending a decision on the amendment to
`Section 44(e) by the trademark examining attorney. Petitioner has also provided true copy, a photocopy, a certification, or a certified copy of the
`foreign registration, including an English translation, if necessary. TMEP §806.03(j)(ii).
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`DISCUSSION
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`An applicant may request post-publication amendments adding or substituting a new statutory basis for registration by filing a petition to the
`Director. 37 C.F.R. §2.146(a)(3); see also 37 C.F.R. §2.35(b)(2). If the petition is granted, the application is returned to the trademark examining
`attorney for examination of the new basis for registration. TMEP §§1107–1107.01. If the new basis is accepted, republication for opposition is
`required. 37 C.F.R. §2.35(b)(2); TMEP §1505.03(a); see also In re Monte Dei Maschi Di Siena, 34 USPQ2d 1415, 1416 (Comm’r Pats. 1995).
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`In this case, petitioner has provided the foreign registration and indicated that the Section 1(b) filing basis is to remain pending acceptance of the
`Section 44(e) filing basis by the trademark examining attorney. Therefore, the Director will invoke supervisory authority to allow the trademark
`examining attorney to review the request to substitute Section 44(e) as the basis for registration. 37 C.F.R. §§2.35(b)(2), 2.146(a)(3).
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`DECISION
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`The petition is granted. The application will be returned to the trademark examining attorney to examine the amendment to the basis, in
`accordance with the procedures set forth in TMEP Sections 1107–1107.01. If the Section 44(e) basis is acceptable, the trademark examining
`attorney will delete the Section 1(b) basis and republish the mark for opposition.
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`Statement of Use Required
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`It is noted that petitioner requested to maintain the Section 1(b) basis pending consideration of the amendment to substitute a Section 44(e) basis.
`Petitioner is advised that the due date for filing a statement of use (SOU) or extension request may be prior to the examination of the amendment
`to add a Section 44(e) basis. As such, an SOU or extension request is due no later than September 1, 2023 if the Section 1(b) basis is not already
`deleted. 15 U.S.C. §1051(d)(4); 37 C.F.R. §§2.88-2.89; TMEP 806.03(j)(ii). If an SOU or extension request is not timely filed, the Section 1(b)
`basis will be deleted. See generally TMEP §806.
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`/Jolie Washington/
`Paralegal Specialist
`Office of the Deputy Commissioner
`for TM Exam Policy
`jolie.washington@uspto.gov
`571-272-9583
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