212 Amendment of Application During or After Extension
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).
212.02 Conditions for Approval of Post-Publication Amendment
During the time between the publication of a mark in the Official Gazette for opposition, and the printing of a certificate of registration or notice of allowance, an application not involved in an inter partes proceeding before the Board may be amended upon request by the applicant, provided that the amendment does not necessitate issuance of a refusal or requirement by the examining attorney. If a refusal or requirement by the examining attorney would be needed, the amendment cannot be made unless applicant (1) successfully petitions the Director to restore jurisdiction over the application to the examining attorney for consideration of the amendment and further examination, and (2) is able to satisfy any requirement or overcome any refusal asserted in any Office action issued after the restoration of jurisdiction. [ Note 1.]
Examples of the types of amendments which may be made under the conditions described above include acceptable amendments to the identification of goods or services, to the drawing, to add a disclaimer, and (in the case of an application under Trademark Act § 1(a), 15 U.S.C. § 1051(a) or an application under Trademark Act 1(b), 15 U.S.C. § 1051(b) in which an acceptable amendment to allege use has been filed), to convert an application for an unrestricted registration to one for concurrent use registration. [ Note 2.]
An applicant who files an amendment to its application during an extension of time to oppose need not have potential opposer’s consent thereto.
NOTES:
1. E.g., 37 CFR § 2.84(b); TMEP § 1504 (Jurisdiction over Application); TMEP § 1505 et seq. (Amendments filed by Applicants After Publication).
2. See In re MCI Communications Corp., 21 USPQ2d 1534, 1539 (Comm’r 1991) (disclaimer). Cf. In re Little Caesar Enterprises, Inc., 48 USPQ2d 1222, 1223 (Comm’r 1998) (regarding request to divide certain items out of a class of goods during extension of time to oppose, and petition to waive rule requiring that request to divide be filed before application is approved for publication). See generally TMEP § 1505.01 regarding procedures for processing amendments filed after publication.
212.03 Form of Amendment
An amendment or other paper relating to an application which is the subject of a request for an extension of time to oppose should be in the normal form for an amendment or other document relating to an application. Such amendments should be filed with the Trademark Examining Operation electronically through TEAS or by faxing it to the USPTO at (571) 270-9007.
212.04 Action by Board - Upon Receipt of Amendment
Amendments filed in applications which are the subject of an extension of time to oppose are acted on by the Trademark Operation and not by the Board, and should be filed either electronically through TEAS or by faxing the amendment to (571)270-9007. Filing such amendments with the Board serves only to delay consideration of the paper. If an amendment is received by the Board, the amendment will be forwarded to the Trademark Operation.
212.05 Action by Board -- During Consideration of Amendment by TMO
The filing and pendency of an amendment will be considered good cause for extensions of time to oppose under 37 CFR § 2.102(c)(1) or 37 CFR § 2.102(c)(2) (extensions up to 120 days from the date of publication), but it will not constitute extraordinary circumstances justifying an extension of time under 37 CFR § 2.102(c)(3) (extension 120-180 days from publication). See TBMP § 207.03. The Board will not suspend the time for filing an opposition or subsequent extension pending consideration of an amendment. See TBMP § 209.01.
If a timely opposition is filed while an amendment is still pending before the Trademark Operation, the Board will institute the opposition. Upon the motion of either party, the Board will usually grant a motion to suspend the opposition pending consideration of the amendment by the Trademark Operation.
In situations where the potential opposer files the notice of opposition electronically using ESTTA, the potential opposer should file the notice of opposition first and wait to receive an opposition number. (Most ESTTA-filed oppositions are instituted automatically within minutes of successful filing.) After the opposition number has been received and a proceeding number assigned, the potential opposer should then file a separate motion to suspend the opposition, citing the pendency of an amendment as grounds for seeking a suspension of proceedings.
212.06 Action by Board -- After Consideration of Amendment by TMO
If an opposition was instituted and suspended prior to the action by the Trademark Operation on a post-publication amendment, and the amendment is subsequently approved, the Board will notify the parties that the amendment was approved, advise the parties that the opposition will go forward on the basis of the application as amended, allow opposer time to indicate whether it wishes to proceed with the opposition on that basis, or to have the opposition dismissed; and suspend the opposition (or continue suspension) pending opposer’s response. If opposer chooses to go forward, proceedings in the opposition will be resumed and appropriate dates will be set. If the amendment is not approved, the parties will be so advised, and proceedings will be resumed with appropriate dates set.
212.07 Amendment During Opposition
If an amendment is filed in an application that is the subject of an opposition, the Board has jurisdiction over the application and will determine the propriety of the amendment. Once an opposition has commenced, the application that is the subject of the opposition may not be amended in substance, except with the consent of the other party or parties and the approval of the Board, or upon motion granted by the Board. [ Note 1.] See TBMP § 514 (Motion to Amend Application or Registration).
NOTES:
1. See 37 CFR § 2.133.