514.01 In General
The amendment of any application or registration that is the subject of an inter partes proceeding before the Board is governed by 37 C.F.R. § 2.133. Thus, an application that is the subject of a Board inter partes proceeding may not be amended in substance, except with the consent of the other party or parties and the approval of the Board, or except upon motion granted by the Board. [ Note 1.] An unconsented motion to amend in substance is generally deferred until final decision or until the case is decided upon summary judgment. [ Note 2.] However, if the proposed amendment limits the identification of goods or services and the applicant consents to the entry of judgment on the grounds for opposition with respect to the broader identification, it may be approved, even where an opposer objects. [ Note 3.]
A registration that is the subject of a Board inter partes proceeding may not be amended or the mark disclaimed in part, except with the consent of the other party or parties and the approval of the Board, or except upon motion granted by the Board. [ Note 4.] Additionally, under 37 C.F.R. § 2.173(b), a request to amend an involved registration must (a) include the fee required by 37 C.F.R. § 2.6(a)(11), (b) be verified and signed in accordance with 37 C.F.R. § 2.193(e)(6); and (c) if the amendment involves a change of the mark, the request must include (1) one new specimen per class showing the mark as used on or in connection with the goods, services, or collective membership organization, (2) a verified statement that the specimen was in use in commerce at least as early as the filing date of the amendment, and (3) a new drawing of the amended mark.
For information regarding amendments to applications that are subject to a pending request for an extension of time to oppose, see TBMP § 212. For information concerning amendments to delete one or more classes from a multiple-class application or registration subject to an inter partes proceeding, see TBMP § 602.01.
The Board recommends submission of a red-lined copy of the proposed amendment clearly showing the proposed changes followed by a clean copy of the proposed amendment. Such a submission will assist Board personnel in determination and, should the motion be granted, entry of the amendment. [ Note 5.]
A proposed amendment to any application or registration that is the subject of an inter partes proceeding must also comply with all other applicable rules and statutory provisions. [ Note 6.] These include 37 C.F.R. § 2.71 -37 C.F.R. § 2.75, in the case of a proposed amendment to an application; 37 C.F.R. § 2.173 and Trademark Act § 7(e), 15 U.S.C. § 1057(e), in the case of a proposed amendment to a registration. Thus, for example, a proposed amendment that involves an addition to the identification of goods or services, or that materially alters the character of the subject mark, will not be approved by the Board. However, an otherwise appropriate amendment to an application will ordinarily not be rejected by the Board solely on the basis that the amendment would require republication of the mark. [ Note 7.] Republication may not be available for applications filed under Trademark Act § 66(a), 15 U.S.C. § 1141f(a), due to the time requirements of the Madrid Protocol. [ Note 8.]
A proposed amendment to an intent-to-use application involved in an opposition to seek registration on the Supplemental Register cannot be entertained by the Board until a statement of use has been filed and approved. See TMEP § 1102.03. Because a notice of allowance will not issue unless and until the opposition is dismissed, a statement of use filed during the pendency of an opposition will be rejected as premature. If the parties agree that such an amendment would resolve the issues in the opposition, they may file a consented motion to dismiss the opposition without prejudice, and applicant may file a use-based application on the Supplemental Register. See TBMP § 219.
A request to amend an application or registration that is the subject of a Board inter partes proceeding should bear at its top both the number of the subject application or registration, and the Board proceeding number and title. In addition, the request should include proof of service of a copy thereof upon every other party to the proceeding. [ Note 9.] See TBMP § 113. A request to amend an application involved in a Board proceeding must be filed with the Board, not with the Trademark Operation. Similarly, a request to amend a registration involved in a Board proceeding must be filed with the Board, not with the Post Registration Section or, in the case of a § 66(a) registration when only the registration extension of protection to the United States is to be amended, not with the International Bureau. Failure to file such a request with the Board will result in unnecessary delay and may result in the loss or misplacement of the amendment request. The Board will act on the amendment and, if appropriate, enter it into the application or registration file and into the record for the Board proceeding. [ Note 10.]
Occasionally WIPO will inform the USPTO that the international registration forming the basis of a § 66(a) application or registration is amended during a proceeding. This can happen for a number of reasons, including corrections, restriction of the basic application in the country of origin (either by voluntary amendment or by a "central attack"), or by voluntary amendment of the extension filed with WIPO. The circumstances under which an amendment, or request to amend, a § 66(a) application or registration arise will dictate whether the amendment must or may be entered and whether the Board has discretion to disallow or defer that amendment until final decision or until the case is decided upon summary judgment. For example, WIPO controls the classification, which can only be amended upon receipt of correction from the International Bureau. [ Note 11.] Similarly, cancellation in part of the goods and services of an international registration due to the ceasing of effect of the basic registration must be entered. [ Note 12.] However, if the holder of an international registration voluntarily limits its list of goods and services, and such limitation affects the extension of protection to the United States, the USPTO may declare that the limitation has no effect. [ Note 13.] Similarly, if the proposed amendment affects only the extension of protection to the United States, the proposed amendment may be considered. [ Note 14.] Where the Board is not able to act on a proposed amendment, or defer the proposed amendment until final decision or until the case is decided upon summary judgment, as appropriate, the Board will issue an order requiring the defendant to show cause why the Board should not enter judgment as to any goods that were deleted by the amendment and then ask the plaintiff whether it wants to continue with the proceeding. [ Note 15.] For a further discussion involving deletions of goods and services in § 66(a) registrations, see TBMP § 602.02(a). For a further discussion involving amendments to § 66(a) applications and registrations, see TMEP § 1904.02(c), TMEP § 1904.02(e), TMEP § 1904.02(j), TMEP § 1904.13, TMEP § 1904.14, and TMEP § 1904.15.
When the Board grants a request to amend a registration that is the subject of a Board inter partes proceeding, the file is forwarded to the Post Registration Section of the Office for entry of the amendment of the registration. The action by the Post Registration Section is limited to the ministerial duty of ensuring that the authorized change to the registration is made. [ Note 14.]
NOTES:
1. See, e.g., Gallagher’s Restaurants, Inc. v. Gallagher’s Farms, Inc., 3 USPQ2d 1864, 1866 (TTAB 1986) (amendment to named excepted users in a concurrent use application); Giant Food Inc. v. Standard Terry Mills, Inc., 231 USPQ 626, 631 (TTAB 1986) (amendment to identification of goods); Greyhound Corp. and Armour and Co. v. Armour Life Insurance Co., 214 USPQ 473, 475 (TTAB 1982) (amendment to dates of use).
2. See Zachry Infrastructure LLC v. American Infrastructure, Inc., 101 USPQ2d 1249, 1255-56 (TTAB 2011) (unconsented motion to amend to Supplemental Register deferred until summary judgment or final hearing); Enbridge Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537, 1539 n.3 (TTAB 2009) (motion to amend identification of goods and dates of use deferred until final hearing); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1219 (TTAB 1990) (motion to amend identification of goods deferred); Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 1554 (TTAB 1987) (motion to amend dates of use deferred); Mason Engineering & Design Corp. v. Mateson Chemical Corp., 225 USPQ 956, 957 n.4 (TTAB 1985) (same).
3. Wisconsin Cheese Group, LLC v. Comercializadora de Lacteos y Derivados S.A. de C.V., 118 USPQ2d 1262, 1266-67 (TTAB 2016) (approving applicant’s motion to amend identifications where applicant consented to judgment and amendments served to change the nature and character of the goods so as to introduce a substantially different issue for trial); Johnson & Johnson v. Stryker Corp., 109 USPQ2d 1077, 1080 (TTAB 2013) (approving applicant’s motion to amend the identification of goods in its application and accepting applicant's consent to judgment with respect to the broader identification of goods, entering judgment as to broader identification of goods); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1435 (TTAB 2007) (proposed amendment not approved because applicant did not consent to entry of judgment as to the broader recitation of services; in addition, specimens of record must support the amended identification of goods, and the applicant must introduce evidence during its testimony period to use of its mark on the amended goods or services prior to the relevant date determined by the basis of the application); Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 963-64 (TTAB 1986) (discussing Board’s adoption of practice of permitting limiting amendments to the identification of goods and/or services made prior to trial even when opposer objects if applicant consents to judgment on the question of likelihood of confusion between the parties’ marks and the broader identification of goods).
4. See Trademark Act § 7(e), 15 U.S.C. § 1057(e); 37 C.F.R. § 2.173.
6. See Trademark Act §7(e), 15 U.S.C. § 1057(e); 37 C.F.R. § 2.71; 37 C.F.R. § 2.72; 37 C.F.R. § 2.173; Couture v. Playdom, Inc., 113 USPQ2d 2042, 2044 (Fed. Cir. 2015) (amendment to substitute basis under 37 C.F.R. § 2.35(b) contemplates substitution of basis during the pendency of the application, not after registration; no error in denial of amendment); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1435-36 (TTAB 2007) (amendment to identification not supported by specimens of use); 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, 1749 (TTAB 1992) (summary judgment granted in part), 26 USPQ2d 1926, 1930 (TTAB 1993) (expansion of scope of goods); Mason Engineering and Design Corp. v. Mateson Chemical Corp., 225 USPQ 956, 957 n.4 (TTAB 1985) (amendment to dates of use not supported by affidavit or declaration).
7. See TMEP § 1505.03(a) (When Republication Is Required) and TMEP § 1505.03(b) (When Republication Is Not Required).
8. See Trademark Act § 68, 15 U.S.C. § 1141h and Trademark Act §69, 15 U.S.C. § 1141i.
9. 37 C.F.R. § 2.119(a); Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1435 (TTAB 2007) (an unconsented motion to amend an application should be made prior to trial, in order to give the other party fair notice thereof.)
10. See Hachette Filipacchi Presse v. Elle Belle LLC, 85 USPQ2d 1090, 1095 (TTAB 2007) (Board has jurisdiction to determine propriety of amendment; subsequent attempt by registrant to delete goods on which mark has never been used through the Post Registration Section Branch is irrelevant); In re Pamex Foods, Inc., 209 USPQ 275, 277 (Comm’r 1980) (Trademark Examining Operation acted beyond its authority in denying amendment to registration which Board had already approved).
11. 37 C.F.R. § 2.85(d), TMEP § 1402.03(d); and TMEP § 1904.03(b).
12. See TMEP § 1904.03(g) and TMEP § 1904.15.
13. See TMEP § 1904.03(g) and TMEP § 1904.15.
14. See TMEP § 1904.02(c), TMEP § 1904.02(e) and TMEP § 1904.13(a).
15. Cf. 37 C.F.R. § 2.134(b).
16. See 37 C.F.R. § 7.22.