212.01 Jurisdiction to Consider Amendment
The Board has no jurisdiction over an application unless and until the application becomes involved in a Board inter partes proceeding. [ Note 1.]That is, although the Board administers requests for extension of time to oppose, the Board does not have jurisdiction over the subject application until a notice of opposition is filed. In the absence of an inter partes proceeding, the Board has jurisdiction only over matters relating to any requested extensions of time to oppose.
Thus, if, in an application which is the subject of a request for an extension of time to oppose, an amendment or other paper (such as a request for republication, a request for reconsideration of a refusal to approve an amendment) relating to the application is filed by the applicant, and the application is not involved in any Board inter partes proceeding, it is the Trademark Operation (and not the Board) which must determine the propriety of the amendment or other paper. [ Note 2.] Unless an inter partes proceeding (i.e., an opposition or concurrent use proceeding) is pending, all post-publication amendments must be filed with the Trademark Operation. [ Note 3.]
However, the Board does determine the propriety of a request filed by an attorney or other authorized representative to withdraw as applicant’s representative, in an application which is the subject of a request for an extension of time to oppose. The Board has jurisdiction to consider the request to withdraw as representative in such a case, because applicant’s representative of record acts in applicant’s behalf in matters relating to the requested extensions of time to oppose. See TBMP § 114-TBMP § 116 for information on representation of parties before the Board. See alsoTBMP § 203.03.
Any amendment proposed by an applicant prior to the commencement of an inter partes proceeding, whether of its own volition or to accommodate a concern of a potential opposer, must be filed electronically through TEAS or by faxing it to the USPTO at (571) 270-9007. Any inquiry about the status of the amendment should be directed by email to TMPostPubQuery@uspto.gov.
Because the Board does not have jurisdiction over an application until the commencement of an inter partes proceeding, parties should take care to direct amendments filed during the opposition period (as extended) to the Trademark Operation as noted above, and not the Board. Filing such papers with the Board will only delay consideration of the amendment. The Board will not suspend the time for filing an opposition or subsequent extension pending consideration of an amendment. See TBMP § 209.01. While the pendency of an amendment to an application will normally constitute good cause for an extension of time to oppose under 37 CFR § 2.102(c)(1) or 37 CFR § 2.102(c)(2) (extensions up until 120 days from the date of publication), it will not be considered an extraordinary circumstance justifying an extension of time to oppose under 37 CFR § 2.102(c)(3) (extension 120-180 days from publication). TBMP § 207.03. Parties seeking amendment of a published application as a means to avoid the filing of an opposition are thus advised to do so as early in the opposition period as possible.
NOTES:
1. Compare 37 CFR § 2.84 (examining attorney may exercise jurisdiction over application prior to publication, and with the permission of the Director, after publication) with 37 CFR § 2.133 (application subject to an opposition may not be amended in substance without Board approval). See generally TMEP § 1504 (Jurisdiction over Application).
2. See 37 CFR § 2.84; In re MCI Communications Corp., 21 USPQ2d 1534, 1535 (Comm’r 1991). Cf. Groening v. Missouri Botanical Garden, 59 USPQ2d 1601, 1603 (Comm’r 1999) (mark originally published in wrong class may be amended by examining attorney to the correct class and republished in the correct class without either applicant’s approval or a restoration of jurisdiction).
3. For information on the procedures for filing and processing post-publication amendments with the Trademark Operation, see TMEP § 1505 (Amendments Filed by Applicants After Publication).