605.03(b)    With Amendment of Subject Application or Registration

If a settlement agreement is contingent upon amendment of a defendant’s subject application or registration, the request for amendment is governed by 37 CFR § 2.133(a)  and should be filed electronically with the Board. See TBMP § 514 (Motion to Amend Application or Registration). Applicants must use ESTTA for filing an amendment to an opposed application. [ Note 1.] The request should list at the top of the page both the number of the subject application or registration, and the Board proceeding number and title. The request also should include proof of service thereof upon every other party to the proceeding. [ Note 2.] See TBMP § 113. Use of the TEAS system is not appropriate for filing an amendment to an application that is the subject of a Board proceeding.

A proposed amendment to a defendant’s application or registration must comply with all applicable rules and statutory provisions. See TBMP § 514.01. Thus, for example, a proposed amendment to a § 1 or § 44 application or registration that materially alters the character of the defendant’s subject mark, [ Note 3.] or a proposed amendment to a § 66(a) application or registration that involves an amendment to the mark at all, [ Note 4.] cannot be approved by the Board. [ Note 5.] If a settlement agreement calls for an amendment that may amount to a material change in the defendant’s mark, the parties may wish to also agree that if a request for amendment of the defendant’s subject application or registration is denied by the Board, the defendant will abandon that application, or voluntarily surrender that registration, and file a new application for registration of the altered mark; and that the plaintiff will not oppose the new application or seek to cancel any registration that matures therefrom. See TBMP § 602 (Withdrawal by Opposition or Cancellation Defendant) for a discussion of abandonment of an application and surrender or voluntary cancellation of a registration.

In an opposition to any application having multiple classes, if the applicant files a request to amend the application to delete an opposed class in its entirety, the request for amendment is, in effect, an abandonment of the application with respect to that class, and is governed by 37 CFR § 2.135. Similarly, in a cancellation proceeding against any registration having multiple classes, if the respondent files a request to amend the registration to delete an entire class sought to be cancelled, the request for amendment is, in effect, a voluntary surrender of the registration with respect to that class, and is governed by 37 CFR § 2.134(a). See TBMP § 602.01 (Withdrawal by Applicant) and TBMP § 602.02 (Withdrawal by Respondent).

In addition, with respect to a cancellation proceeding against a § 66(a) registration, if the respondent requests cancellation with the International Bureau (IB) as to some of the goods and services in a single class in the international registration, without the written consent of every adverse party to the proceeding, the request is, in effect, a voluntary cancellation of the § 66(a) registration with respect to those goods or services and judgment will be entered against the registrant as to the deleted goods or services. [ Note 6.] See TBMP § 602.02 (Withdrawal by Respondent). However, if the respondent requests a deletion of some of the goods or services in a single class, and such deletion will effect only the registered extension of protection to the United States, the deletion is considered an amendment, and may be filed with the USPTO, subject to 37 CFR § 2.133  (amendment of application or registration during proceedings). Similarly, if the USPTO is notified by the IB that a limitation of the list of goods and services affects the registered extension of protection to the United States, but not the international registration, and such limitation results in a deletion of some of the goods and services in a single class, the deletion is considered an amendment to the § 66(a) registration. [ Note 7.] Such a limitation is also subject to 37 CFR § 2.133.

NOTES:

 1.   See 37 CFR § 2.126(a)  and 37 CFR § 2.126(b).

 2.   See 37 CFR § 2.119(a).

 3.   See Trademark Act § 7(e), 15 U.S.C. § 1057(e); 37 CFR § 2.72  and 37 CFR § 2.173.

 4.   The mark in a § 66(a) registration cannot be amended under Trademark Act § 7, 15 U.S.C. § 1057. See 37 CFR § 2.72, providing only for amendments to the mark in § 1 and § 44 applications; and the International Bureau’s Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol, at www.wipo.int/madrid/en/guide. See also TMEP § 1609.02 and TMEP § 1904.02(j); Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act, 68 Fed. Reg. 55748, 55756 (September 26, 2003).

 5.   See Trademark Act § 7(e), 15 U.S.C. § 1057; 37 CFR § 2.71, 37 CFR § 2.72, 37 CFR § 2.173, and 37 CFR § 2.73; Vaughn Russell Candy Co. v. Cookies In Bloom, Inc., 47 USPQ2d 1635, 1636 (TTAB 1998) (material alteration); Aries Systems Corp. v. World Book Inc., 23 USPQ2d 1742, 1745 (TTAB 1992), summ. judgment granted in part, 26 USPQ2d 1926 (TTAB 1993) (expansion of scope of goods); Mason Engineering and Design Corp. v. Mateson Chem. Corp., 225 USPQ 956, 957 (TTAB 1985) (amendment to dates of use not supported by affidavit or declaration).

 6.   Cf. Trademark Act § 70, 15 U.S.C. § 1141j. Cf. 37 CFR § 2.172  (for registrations under §§ 1 and 44, a deletion of fewer than all the goods or services in a single class constitutes an amendment of the registration as to that class, not a surrender.).

 7.   See TMEP § 1904.15.