TMEP § 1505
Applicants sometimes submit amendments to the application after publication. For processing purposes, an "amendment after publication" includes any amendment filed during the time period in which the USPTO is unable to withdraw a mark from its scheduled publication in the Trademark Official Gazette, or from the scheduled issuance of its registration. The USPTO is generally unable to withdraw a mark unless the amendment is received and processed at least twenty days before the scheduled publication date or registration issue date.
The following sections discuss the USPTO’s procedures and policies for the disposition of amendments after publication.
Requirement for Representation of Non-U.S.-domiciled Applicants. An applicant’s domicile will determine whether the applicant is required to be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory (a qualified U.S. attorney). 37 C.F.R. §§2.11(a), 11.1, 11.14(e); TMEP §601. An applicant whose domicile is not located within the United States or its territories must be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601. See TMEP §601 regarding determining domicile and §602 regarding persons authorized to practice before the USPTO in trademark matters.
If the USPTO receives a post-publication amendment filed by an unrepresented foreign domiciliary, an attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will follow the procedures in TMEP §601.01(a) and grant the applicant additional time to appoint a qualified U.S. attorney. If the applicant does not appoint a qualified U.S. attorney within the time allowed, the amendment will not be reviewed.
Form of amendments. All amendments filed after publication must be submitted in writing and signed by a proper party. 37 C.F.R. §2.193(e)(2). Unless a notice of opposition has been filed, the USPTO generally requires that amendments filed after publication but before issuance of a registration or notice of allowance be filed using the trademark electronic filing system's Post-Publication Amendment form.
Requests to correct minor typographical errors entered by the USPTO must also be submitted in writing and signed by a proper party using the same Post-Publication Amendment form. See 37 C.F.R. §2.193(e)(2). Inquiries regarding the procedure for submitting a post-publication amendment, or questions regarding the status of a pending post-publication amendment, can be made by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 or emailing TrademarkAssistanceCenter@uspto.gov.
Any amendment filed during the pendency of an inter partes opposition proceeding must be filed directly with the Board via the Board's electronic filing system. See TBMP §110.01; TMEP §1505.01(f).
Timing of amendments. The USPTO cannot process any amendment filed during the time periods in which the mark cannot be withdrawn from publication in the Trademark Official Gazette or from issuance of a registration. If a request for amendment relates to a mark that cannot be withdrawn from publication, it will be processed in accordance with the procedures set forth in TMEP §1505.01(b) through §1505.02(g). If a request for amendment relates to a mark that cannot be withdrawn from issuance of a registration, or that has already registered, the applicant will be instructed to resubmit its request to the Post Registration Section as a request to amend or correct the registration under §7 of the Trademark Act. 15 U.S.C. §1057; 37 C.F.R. §§2.6, 2.173(a), 2.174, 2.175.
See TMEP §1107 and §1107.01 regarding amendments to a §1(b) application filed between the issuance of a notice of allowance and the submission of a statement of use, and TMEP §§1609-1609.12 regarding amendment of a registration under §7(e) of the Trademark Act.
Amendments filed after publication will be reviewed by paralegal specialists in the Office of the Deputy Commissioner for Trademark Examination Policy. If necessary, the application will be withdrawn from issue to ensure that the mark does not register before the amendment has been considered. The paralegal specialists will consult with an attorney, if necessary.
If an amendment is acceptable and does not require republication of the mark, the paralegal specialist will enter the amendment and the mark will continue on to the scheduled issue date. See TMEP §1505.03(b) for examples of amendments that do not require republication.
If the amendment is acceptable and republication is required, the paralegal specialist will enter the amendment and set a new publication date. A new notice of publication will be issued. See TMEP §1505.03(a) for examples of amendments that require republication.
If the paralegal specialist determines that an amendment is unacceptable, the paralegal specialist must provide written notification to the applicant, explaining why the amendment is unacceptable and advising the applicant that: (1) the application will be returned to processing without entry of the requested amendment; and (2) applicant’s only recourse is to file a Petition to Director in the trademark electronic filing system requesting that jurisdiction be restored to the examining attorney to consider the merits of the amendment. 37 C.F.R. §§2.84, 2.146. Any petition to the Director must be filed within six weeks of the publication date to ensure that it is timely processed. Thereafter, any request for amendment must be filed pursuant to §7 of the Trademark Act, 15 U.S.C. §1057.
Amendments filed after publication and before issuance of a notice of allowance will be reviewed by paralegal specialists in the Office of the Deputy Commissioner for Trademark Examination Policy. If necessary, the application will be withdrawn from issue to ensure that the notice of allowance does not issue before the amendment has been considered.
If the amendment is acceptable and republication is not required, the paralegal specialist will enter the amendment and schedule the mark for issuance of a notice of allowance. See TMEP §1505.03(b) for examples of amendments that do not require republication.
If the amendment is acceptable and republication is required, a paralegal specialist must telephone or email the applicant and inform the applicant that the amendment is acceptable, but requires republication of the mark. If the applicant wishes to pursue the request, the paralegal specialist must enter a Note to the File (also referred to as a Public Note or Notation to File) in the record indicating that the proposed amendment has been accepted, that republication is required, and that the applicant has agreed to the republication. The paralegal specialist will then enter the amendment and set a new publication date. A new notice of publication will be issued. See TMEP §1505.03(a) for examples of amendments that require republication.
If the paralegal specialist determines that the amendment is unacceptable, the paralegal specialist must provide written notification to the applicant explaining why the amendment is unacceptable and advising the applicant that: (1) the request to amend the application may be resubmitted with the statement of use; or (2) the applicant may file a Petition to Director under 37 C.F.R. §2.84 and §2.146 in the trademark electronic filing system requesting that jurisdiction be restored to the examining attorney to consider the merits of the amendment.
See TMEP §§1107-1107.01 regarding amendments after issuance of the notice of allowance but before the filing of the statement of use.
Generally, the only amendments that will be entered in a §1(b) application between the issuance of a notice of allowance and the submission of a statement of use are those outlined in TMEP §1107. See 37 C.F.R. §2.77(a). All other amendments may be entered during this period only with the express permission of the Director, after consideration on petition under 37 C.F.R. §2.146. If the Director determines that the amendment requires review by the examining attorney, the petition will be denied and the amendment may be resubmitted with the statement of use in order for the applicant to preserve its right to review. 37 C.F.R. §2.77(b). A petition is not required for amendments submitted as part of the statement of use. See TMEP §§1107–1107.01 for further information about amendments filed between the issuance of a notice of allowance and the submission of a statement of use, §1109.08 regarding examination of amendments submitted with a statement of use, and Chapter 1700 regarding petitions to the Director.
An amendment of an application that is under an extension of time to file an opposition should be processed in accordance with the procedures set forth in TMEP §1505.01(b)-(d). See TBMP §212.01. The Director retains jurisdiction of such an application until an opposition is actually filed.
It is not necessary for the paralegal specialist to notify the Board of the action taken on the amendment.
The Board will not suspend the potential opposer's time to file a notice of opposition in this situation. Id.
If the applicant files an amendment after a notice of opposition has been filed, the Board will act on the amendment under 37 C.F.R. §2.133. The Board has jurisdiction over any application in which an opposition has been filed. See TBMP §§514-514.04 for further information about amending an application during an opposition.
The following subsections discuss the most common types of amendments after publication. Note that there are some restrictions on amendments to §66(a) applications, as discussed below. In addition, only certain amendments are permitted in §1(b) applications between the issuance of the notice of allowance and filing of the statement of use absent the filing of a petition to the Director under 37 C.F.R. §2.146. See 37 C.F.R. §2.77; TMEP §§1107, 1107.01.
See TMEP §1505.01(a) regarding the form and timing of filing amendments after publication and §1609 regarding amendment of a registration under §7(e) of the Trademark Act.
If an applicant proposes to amend the identification after publication by restricting or deleting items in the existing identification, and the amendment is otherwise proper, the USPTO will approve the amendment, and the mark will not be republished. Amendments to add to or broaden the scope of an identification are not permitted at any time. See 37 C.F.R. §2.71(a); TMEP §§1402.07-1402.07(e).
In an application under §1 or §44, if the applicant proposes to amend the classification after publication, and the amendment is consistent with the current version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, the USPTO will approve the amendment. Republication is not required.
The international classification in a §66(a) application cannot be changed from the classification assigned by the IB. 37 C.F.R. §2.85(d); see TMEP §1401.03(d).
In an application under §1 or §44, if the applicant proposes to amend the mark after publication, the amendment is not a material alteration of the mark, and the specimen of record or foreign registration (if applicable) supports use of the mark as amended, the USPTO will approve the amendment and will not republish the mark. If the applicant proposes to amend the mark and the amendment represents a material alteration to the mark, the USPTO will not approve the amendment. See 37 C.F.R. §2.72; TMEP §§807.13-807.13(b), 807.14-807.14(f).
The mark in a §66(a) application cannot be amended. TMEP §807.13(b).
If, in an application under §1(a), the applicant proposes to amend the dates of use to adopt a date of use that is after the filing date of the application, the USPTO will not approve the amendment. See 37 C.F.R. §2.71(c)(1). If, in an application under §1(a), the applicant proposes to amend the dates of use to adopt a date of use that is later than the date originally stated, but before the application filing date, the USPTO will approve the amendment and will republish the mark to provide notice to parties who may have commenced use of a similar mark during the intervening period. If the applicant proposes to amend the dates of use to adopt a date that is before the date originally stated, the USPTO will approve the amendment and will not republish the mark. See TMEP §903.04 for further information about amending the dates of use in a pending application, and §1609.07 regarding amendment of the dates of use after registration.
If an applicant proposes to amend an application to insert a disclaimer after publication and before issuance of the notice of allowance or registration certificate, and the amendment is otherwise proper, the USPTO will approve the amendment and will not republish the mark. If the notice of allowance has issued, an amendment to insert a disclaimer may not be submitted as a post publication amendment. It must be submitted in a Petition to Director under Trademark Rule 2.146 in the trademark electronic filing system. See 37 C.F.R. §§2.77(b), 2.146. Likewise, if the USPTO requests the insertion of a disclaimer after publication and the applicant agrees to the disclaimer, the USPTO will enter the disclaimer and will not republish the mark.
If an applicant proposes to amend the application to delete a disclaimer after publication and before issuance of the notice of allowance or registration certificate, and the USPTO determines that the amendment is acceptable, the USPTO will approve the amendment in accordance with the procedures in TMEP §1505.01(c)(i), and will republish the mark. If the amendment deleting the disclaimer is unacceptable, the USPTO will follow the procedures in TMEP §1505.01(c)(ii).
A request to delete a disclaimer after issuance of the notice of allowance and before the filing of a statement of use is not permitted. Between the issuance of the notice of allowance and the filing of a statement of use, the Office cannot republish the application or issue an Office action regarding the request. Instead, the applicant may submit the amendment with the statement of use.
Republication is generally required when a disclaimer is deleted after publication (e.g., if printed through a clerical error or originally required by the examining attorney and later determined to be unnecessary).
Exception: If the applicant proposes to amend the mark after publication to delete matter that was the subject of a disclaimer (e.g., generic wording), the USPTO determines that the amendment is not a material alteration of the mark, and the applicant also requests that the disclaimer be deleted, republication is not required.
In an application that is not the subject of an inter partes proceeding before the Board, if an applicant wants to add or substitute a basis after publication, the applicant must file a Petition to Director in the trademark electronic filing system to request that the examining attorney consider the amendment. If the Director grants the petition, and the examining attorney accepts the added or substituted basis, the mark must be republished. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j). See TMEP §806.03 regarding amending the basis generally and 37 C.F.R. §2.133(a) and TBMP §514 regarding amending the basis of an application that is the subject of an inter partes proceeding before the Board.
In a §66(a) application, the applicant may not change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a). See TMEP §§1904.09-1904.09(b) regarding transformation.
In a multiple-basis application, the applicant may delete a basis at any time prior to registration. 37 C.F.R. §2.35(b)(1); TMEP §806.04. No petition is required. See TMEP §806.04(a) regarding the deletion of a §1(b) basis after publication or issuance of the notice of allowance.
If an applicant proposes to amend an application after publication to correct an inadvertent error in the manner in which its name, entity type, or citizenship is set forth, and the amendment is otherwise proper, the USPTO will approve the amendment and will not republish the mark. See TMEP §1201.02(c) regarding correcting errors in how the applicant is identified, including examples of correctable and non-correctable errors in identifying the applicant.
The following sections list examples of post-publication amendments that require republication of the mark and those that do not require republication. If a mark that is the subject of a request for an extension of time to oppose will be republished, the paralegal specialist or the examining attorney who orders the republication must notify the Board that the mark will be republished. See TBMP §214 regarding the effect of republication on marks that are republished during the original thirty-day opposition period or within a granted extension period.
Republication is required after entry of any acceptable post-publication amendment that expands the applicant’s rights or would otherwise require notice to third parties. The following list, though not exhaustive, provides examples of amendments that would require republication of the mark:
Republication is not required after entry of acceptable post-publication amendments in the following situations: