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 issuance 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 with the Trademark Examining Operation, provided that the amendment meets the requirements of 37 C.F.R. § 2.71, 37 C.F.R. § 2.72 and 37 C.F.R. § 2.74. [ Note 1.] Otherwise, an amendment to such an application may be submitted only upon petition to the Director to restore jurisdiction over the application to the examining attorney for consideration of the amendment and further examination. [ Note 2.]. If a proposed amendment would necessitate issuance of a refusal or requirement by the examining attorney, 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 3.]
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 4.]
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:
3. See, e.g., 37 C.F.R. § 2.84(b); TMEP § 1504 (Jurisdiction over Application); TMEP § 1505 et seq. (Amendments filed by Applicants After Publication).
4. 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.