807.13   Amendment of Mark

37 C.F.R. §2.72  Amendments to description or drawing of the mark.

  • (a) In an application based on use in commerce under section 1(a) of the Act, the applicant may amend the description or drawing of the mark only if:
  • (1) The specimens originally filed, or substitute specimens filed under §2.59(a), support the proposed amendment; and
  • (2) The proposed amendment does not materially alter the mark.  The Office will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.
  • (b) In an application based on a bona fide intention to use a mark in commerce under section 1(b) of the Act, the applicant may amend the description or drawing of the mark only if:
  • (1) The specimens filed with an amendment to allege use or statement of use, or substitute specimens filed under §2.59(b), support the proposed amendment; and
  • (2) The proposed amendment does not materially alter the mark.  The Office will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.
  • (c) In an application based on a claim of priority under section 44(d) of the Act, or on a mark duly registered in the country of origin of the foreign applicant under section 44(e) of the Act, the applicant may amend the description or drawing of the mark only if:
  • (1) The description or drawing of the mark in the foreign registration certificate supports the amendment; and
  • (2) The proposed amendment does not materially alter the mark.  The Office will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.

807.13(a)   Amendment of Mark in Applications Under §§1 and 44

Section 1(a) Application.  The mark in an application under §1(a) of the Trademark Act can be amended if the specimen supports the amendment and the amendment does not materially alter the mark.  37 C.F.R. §2.72(a).  See TMEP §§904 et seq. regarding specimens, and TMEP §§807.14 et seq. regarding material alteration.

Section 1(b) Application.  The mark in an application under §1(b) of the Trademark Act can be amended if the specimen filed with an amendment to allege use or statement of use supports the amendment, and the amendment does not materially alter the mark.  37 C.F.R. §2.72(b).  See TMEP §§904 et seq. regarding specimens, TMEP §§1104 et seq. regarding amendments to allege use, TMEP §§1109 et seq. regarding statements of use, and TMEP §§807.14 et seq. regarding material alteration.

Section 44 Application.  The mark in an application under §44 of the Trademark Act can be amended if the mark in the foreign registration certificate supports the amendment, and the amendment does not materially alter the mark.  37 C.F.R. §2.72(c).  See TMEP §1011.01 regarding the requirement that the mark on the drawing in a §44 application be a substantially exact representation of the mark as it appears in the foreign registration certificate, and TMEP §§807.14 et seq. regarding material alteration.

807.13(b)   Mark in §66(a) Application Cannot be Amended

The Madrid Protocol and the Common Regs. do not permit amendment of the mark in an international registration.  If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application.  The IB’s Guide to International Registration, Para. B.II.72.02, provides as follows:

[T]here is no provision for a mark that is recorded in the International Register to be amended in any way, either on renewal or at any other time.  If the holder wishes to protect the mark in a form which differs, even slightly, from the mark as recorded, he must file a new international application.  This is true even if the mark has been allowed to be changed in the basic application, the registration resulting from the basic application or the basic registration, as the case may be....

Accordingly, because an application under §66(a) of the Trademark Act is a part of the international registration, 37 C.F.R. §2.72 makes no provision for amendment of the mark in a §66(a) application, and the USPTO will not permit any such amendments.  See notice at 68 FR 55748, 55756 (Sept. 26, 2003).  See TMEP §1904.02(j).

Exception:  Non-material informational matter that appears on the international registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.

However, the applicant must comply with United States requirements regarding drawings and descriptions of the mark.  See TMEP §1904.02(k).

Similarly, after registration, a registrant generally cannot amend under §7 of the Trademark Act a mark in a registered extension of protection under §7 of the Trademark Act, except to add a standard character claim if the registered mark complies with the requirements of 37 C.F.R. §§2.52(a)(1)-(5).  TMEP §§1609.01(a) and 1609.02.

See TMEP §§1904.03(f) and 1904.14 regarding notifications of corrections in the International Register with respect to pending §66(a) applications and registered extensions of protection.