514.03    Amendment Without Consent

The Board, in its discretion, may grant a motion to amend an application or registration that is the subject of an inter partes proceeding, even if the other party or parties do not consent thereto. [ Note 1.]

When a motion to amend an application or registration in substance is made without the consent of the other party or parties, it ordinarily should be made prior to trial, in order to give the other party or parties fair notice thereof. An unconsented motion to amend that is not made prior to trial, and which, if granted, would affect the issues involved in the proceeding, normally will be denied by the Board unless the matter is tried by express or implied consent of the parties pursuant to Fed. R. Civ. P. 15(b). [ Note 2.] Cf. TBMP § 314 (Unpleaded Matters) and TBMP § 507 (Motion to Amend Pleading).

The Board generally will defer determination of a timely filed (i.e., pretrial) unconsented motion to amend in substance until final decision, or until the case is decided upon summary judgment. [ Note 3.]

If a defendant, whose application or registration is the subject of a Board inter partes proceeding, wishes to defend by asserting that it is at least entitled to a registration with a particular restriction, the defense should be raised either in the defendant’s answer to the complaint, or by way of a timely motion to amend the application or registration to include the restriction. [ Note 4.] A request by a defendant to restrict its identification of goods or services under Trademark Act § 18, 15 U.S.C. § 1068, may be made by way of a motion under 37 C.F.R. § 2.133  or raised as an affirmative defense in the answer (as originally filed, as amended, or as deemed amended) by alleging that the restriction will avoid a likelihood of confusion, and alleging that plaintiff is not using the mark on the products or services being excluded from the registration. [ Note 5.] See TBMP § 311.02(b). The proposed restriction should be described in sufficient detail to give the plaintiff fair notice thereof. [ Note 6.] See TBMP § 311.02(b).

If the Board ultimately finds that a defendant is not entitled to registration in the absence of a restriction that was timely proposed by the defendant, the proposed restriction will be approved and entered. [ Note 7.] If a further refinement thereof is found necessary by the Board, and is within the scope of the notice given to plaintiff by defendant, or was tried with the express or implied consent of plaintiff, defendant will be allowed time in which to file a request that its application or registration be amended to conform to the findings of the Board, failing which judgment will be entered against the party. [ Note 8.] If, on the other hand, the Board ultimately finds that defendant is entitled to registration even without the proposed restriction, defendant will be allowed time to indicate whether it still wishes to have the restriction entered.

Geographic limitations will be considered and determined by the Board only in the context of a concurrent use proceeding. [ Note 9.] See TBMP § 1101.02. Moreover, Trademark Act § 7(e), 15 U.S.C. § 1057(e), and 37 C.F.R. § 2.173  cannot be used to impose concurrent use restrictions on registrations. [ Note 10.] However, an applicant whose geographically unrestricted use-based application is the subject of an opposition proceeding may file a motion to amend its application to one for a concurrent use registration, with the opposer being recited as the exception to the applicant’s right to exclusive use. If the proposed amendment is otherwise appropriate, and is made with the consent of the opposer, the opposition will be dismissed without prejudice in favor of a concurrent use proceeding. If the opposer does not consent to the amendment, the amendment may nevertheless be approved and entered, and a concurrent use proceeding instituted, provided that applicant agrees to accept entry of judgment against itself in the opposition with respect to its request for a geographically unrestricted registration. [ Note 11.] See TBMP § 1113.

An amendment that is actually a correction is to be submitted to the Board for an application or registration that is the subject matter of an inter partes proceeding. The proposed amendment must meet the standards for a correctable mistake. The consent of the adverse party is not required. Ordinarily an amendment seeking to correct a mistake addresses errors in how the applicant or registrant is identified. [ Note 12.]

NOTES:

 1.   37 C.F.R. § 2.133(a). See Drive Trademark Holdings LLC v. Inofin, 83 USPQ2d 1433, 1435 (TTAB 2007) (noting principle that an acceptable amendment to the identification may be permitted despite opposer’s objection if amendment limits identification and applicant consents to entry of judgment on the question of likelihood of confusion as to the broader identification). See also, e.g., Wisconsin Cheese Group, LLC v. Comercializadora de Lacteos y Derivados S.A. de C.V., 118 USPQ2d 1262, 1266-67 (TTAB 2016) (applicant consented to judgment on the grounds for opposition with respect to the broader identifications of goods); Johnson & Johnson v. Stryker Corp., 109 USPQ2d 1077, 1080 (TTAB 2013) (applicant willing to accept judgment with respect to broader identification of goods); International Harvester Co. v. International Telephone and Telegraph Corp., 208 USPQ 940, 941 (TTAB 1980) (where applicant was willing to accept judgment with respect to the broader identification of goods); Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1229 (TTAB 1993) (where applicant consented to entry of judgment against itself with respect to a geographically unrestricted registration).

 2.   See, e.g., Drive Trademark Holdings LLC v. Inofin, 83 USPQ2d 1433, 1435-36 (TTAB 2007) (amendment denied, specimens did not support proposed amendment and applicant did not consent to judgment; but applicant may file renewed motion with appropriate documentation); Personnel Data Systems, Inc. v. Parameter Driven Software, Inc., 20 USPQ2d 1863, 1865 (TTAB 1991) (defendant’s motion to restrict identification of goods in involved registration, filed with brief on case, denied); Peopleware Systems, Inc. v. Peopleware, Inc., 226 USPQ 320, 321 n.2 (TTAB 1985) (same); International Harvester Co. v. International Telephone and Telegraph Corp., 208 USPQ 940, 941 (TTAB 1980) (amendment to identification may be permitted if made before trial, if it serves to limit the scope of goods, and if applicant consents to judgment with respect to the broader identification of goods). Cf. Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1128 (TTAB 1990) (amendment after trial permitted to allege new defense allowed, but defense rejected on the merits).

 3.   See Zachry Infrastructure LLC v. American Infrastructure Inc., 101 USPQ2d 1249, 1255-56 (TTAB 2011) (unconsented motion to amend to Supplemental Register deferred to 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); Leeds Technologies Ltd. v. Topaz Communications Ltd., 65 USPQ2d 1303, 1307 (TTAB 2002) (motion to amend to substitute a basis deferred to 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, 1554-55 (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). But see Wisconsin Cheese Group, LLC v. Comercializadora de Lacteos y Derivados S.A. de C.V., 118 USPQ2d 1262, 1266-67 (TTAB 2016) (contested motion to amend granted where applicant consented to judgment on the grounds for opposition with respect to the broader identifications of goods); Johnson & Johnson v. Stryker Corp., 109 USPQ2d 1077, 1080 (TTAB 2013) (same); Drive Trademark Holdings LLC v. Inofin, 83 USPQ2d 1433, 1435 (TTAB 2007) (same).

 4.   See Ayoub, Inc. v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1394 (TTAB 2016) (applicant’s motion to amend to Supplemental Register filed for first time in its main brief on the case deemed untimely where issue was neither raised prior to or during trial nor tried by implied consent).

 5.   See 37 C.F.R. § 2.133(a)  and 37 C.F.R. § 2.133(b); The Brooklyn Brewery Corporation v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *4-5 (TTAB 2020) (applicant’s timely motion to amend its application under Section 18 deferred until trial), aff’d in part, vacated in part, and remanded, 17 F.4th 129, 2021 USPQ2d 1069 (Fed. Cir. 2021) (remanding for the Board to enter judgment in favor of Opposer as to the items deleted from the involved application); Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828 (TTAB 2013) (ideally, Section 18 affirmative defense should be made in answer to put plaintiff on notice followed by a motion to amend the application or registration); Personnel Data Systems Inc. v. Parameter Driven Software Inc., 20 USPQ2d 1863, 1864-65 (TTAB 1991) (due to lack of notice to plaintiff, Board would not entertain request to restrict defendant’s identification of goods made for first time in trial brief); Flow Technology Inc. v. Picciano, 18 USPQ2d 1970, 1972-73 (TTAB 1991) (although applicant filed no motion or amendment to narrow its identification, after granting summary judgment on identification of goods as published, the Board allowed applicant time to file a request to amend identification to accurately reflect goods sold under the mark); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1220-21 n.5 (TTAB 1990) (applicant may make a request to restrict goods set forth in its own application by way of affirmative pleading in answer, an amended pleading, or by way of motion).

 6.   See Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828-29 (TTAB 2013) (Section 18 affirmative defense, and corresponding motion to amend the application or registration, should be made early to put plaintiff on notice); ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1353-54 (TTAB 2007) (proposed restriction must be stated with precision); Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1220-21 n.5 (TTAB 1990) (request for relief under Section 18 may be made by way of an affirmative pleading or by motion). See also Flow Technology Inc. v. Picciano, 18 USPQ2d 1970, 1972-73 (TTAB 1991) (Board allowed applicant time to amend identification to restrict goods after entry of summary judgment on original identification).

 7.   See Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1841 (TTAB 2013) (Section 18 defense raised in alternative is relevant, motion to amend involved applications is granted, oppositions are dismissed). But see Southwestern Management, Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1031 n.152 (TTAB 2015) (applicant not allowed time to amend application where no specific restriction was suggested or tried by any party), aff’d, 652 F. App’x 971 (Fed. Cir. 2016) (mem).

Please Note: Except in limited circumstances, requests to record changes to a Trademark Act § 66(a) registration must be filed with the International Bureau. See 37 C.F.R. § 7.22. See also TMEP § 1904.06 andTMEP § 1904.13.

 8.   See 37 C.F.R. § 2.133(b). See also Trademark Act § 18, 15 U.S.C. § 1068.

 9.   See 37 C.F.R. § 2.133(c); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1106 n.3 (TTAB 2007) (counterclaim for partial cancellation by limiting geographic area denied); Snuffer & Watkins Management Inc. v. Snuffy’s Inc., 17 USPQ2d 1815, 1816 (TTAB 1990) (allegations of abandonment in a particular geographic location constitute an insufficient pleading).

 10.   See In re Forbo, 4 USPQ2d 1415, 1416 (Comm’r 1984) (petition to Commissioner to territorially restrict a registration denied); and In re Alfred Dunhill Ltd., 4 USPQ2d 1383, 1384 (Comm’r 1987).

 11.   See Faces, Inc. v. Face’s, Inc., 222 USPQ 918, 919-20 (TTAB 1983).

 12.   See, e.g., TMEP §1201.02(c) (Correcting Errors in How the Applicant is Identified) and TMEP §1609.10 (Correction to Mistake in Registration).