1505    Amendments Filed by Applicants After Publication

Applicants sometimes submit amendments after publication.  For processing purposes, an "amendment after publication" includes any amendment filed during the time period in which the USPTO is unable to withdraw a mark from its scheduled publication in the Official Gazette, or from the scheduled issuance of its registration.  The USPTO is generally unable to withdraw a mark unless the amendment is received and processed at least twenty days before the scheduled publication date or registration issue date.  

The following sections discuss the USPTO’s procedures and policies for the disposition of amendments after publication.

1505.01      Procedures for Processing Amendments Filed by the Applicant After Publication

1505.01(a)      Form and Timing of Amendments  

All amendments filed after publication must be submitted in writing.  Unless a notice of opposition has been filed, the USPTO prefers that amendments filed after publication but before issuance of a registration or notice of allowance be filed electronically. In TEAS, the Post-Publication Amendment form can be accessed at http://www.uspto.gov. If it is not possible to file the amendment electronically, it should be faxed to Post Publication Amendments/Corrections at 571-270-9007, unless the amendment includes a special form drawing.   See 37 C.F.R. §2.195(d)(2)  (prohibiting fax transmission of drawing). An amendment filed on paper that includes a special form drawing should be mailed to the following address:

Commissioner for Trademarks

Petitions Office

P.O. Box 1451

Alexandria, Virginia 22313-1451

Requests to correct minor typographical errors entered by the USPTO, inquiries regarding the procedure for submitting a post-publication amendment, or questions regarding the status of a pending post-publication amendment can be e-mailed to TMPostPubQuery@uspto.gov.

Any amendment filed during the pendency of an inter partes opposition proceeding should be filed directly with the Board.   See 37 C.F.R. §2.133; TMEP §1505.01(f).

The USPTO cannot process any amendment filed during the time periods in which the mark cannot be withdrawn from publication in the Official Gazette or from issuance of a registration.  If a request for amendment relates to a mark that cannot be withdrawn from publication, it will be processed in accordance with the procedures set forth in TMEP §§1505.01(b) through 1505.02(f).  If a request for amendment relates to a mark that cannot be withdrawn from issuance of a registration, or that has already registered, the applicant will be instructed to resubmit its request to the Post Registration Section as a request to amend or correct the registration under §7 of the Trademark Act.  15 U.S.C. §1057;  37 C.F.R. §§2.6, 2.173(a), 2.174, 2.175.

See TMEP §§1107 and 1107.01 regarding amendments to a §1(b) application filed between the issuance of a notice of allowance and the submission of a statement of use, and TMEP §§1609 et seq. regarding amendment of a registration under §7(e) of the Trademark Act.

1505.01(b)      Processing Amendments to §§1(a), 44, and 66(a) Applications in Cases Where No Opposition Has Been Filed and a Registration Certificate Has Not Yet Issued

Amendments filed after publication will be reviewed by paralegal specialists in the Office of the Deputy Commissioner for Trademark Examination Policy.  If necessary, the application will be withdrawn from issue to ensure that the mark does not register before the amendment has been considered.  The paralegal specialists will consult with an attorney, if necessary.

1505.01(b)(i)      Acceptable Amendments

If an amendment is acceptable and does not require republication of the mark, the paralegal specialist will enter the amendment and the mark will continue on to the scheduled issue date.  See TMEP §1505.03(b) for examples of amendments that do not require republication.

If the amendment is acceptable and republication is required, the paralegal specialist must telephone or e-mail the applicant and inform the applicant that the amendment is acceptable, but requires republication of the mark.  If the applicant wishes to pursue the request, the paralegal specialist must enter a Note to the File in the record that the proposed amendment has been accepted, that republication is required, and that the applicant has agreed to the republication.  The paralegal specialist will then enter the amendment and set a new publication date.  A new notice of publication will be issued.  See TMEP §1505.03(a) for examples of amendments that require republication.

1505.01(b)(ii)      Unacceptable Amendments

If the paralegal specialist determines that an amendment is unacceptable, the paralegal specialist must provide written notification to the applicant, explaining why the amendment is unacceptable and advising the applicant that:  (1) the application will be returned to processing without entry of the requested amendment; and (2) applicant’s only recourse is to file a petition to the Director requesting that jurisdiction be restored to the examining attorney to consider the merits of the amendment.  37 C.F.R. §§2.84, 2.146.  Any petition to the Director must be filed within six weeks of the publication date to ensure that it is timely processed.  Thereafter, any request for amendment must be filed pursuant to §7 of the Trademark Act, 15 U.S.C. §1057.

1505.01(c)      Processing Amendments to §1(b) Applications in Cases Where No Opposition Has Been Filed and No Notice of Allowance Has Issued

Amendments filed after publication and before issuance of a notice of allowance will be reviewed by paralegal specialists in the Office of the Deputy Commissioner for Trademark Examination Policy.  If necessary, the application will be withdrawn from issue to ensure that the notice of allowance does not issue before the amendment has been considered.

1505.01(c)(i)      Acceptable Amendments

If the amendment is acceptable and republication is not required, the paralegal specialist will enter the amendment and schedule the mark for issuance of a notice of allowance.  See TMEP §1505.03(b) for examples of amendments that do not require republication.

If the amendment is acceptable and republication is required, a paralegal specialist must telephone or e-mail the applicant and inform the applicant that the amendment is acceptable, but requires republication of the mark.  If the applicant wishes to pursue the request, the paralegal specialist must enter a Note to the File in the record indicating that the proposed amendment has been accepted, that republication is required, and that the applicant has agreed to the republication.  The paralegal specialist will then enter the amendment and set a new publication date.  A new notice of publication will be issued.  See TMEP §1505.03(a) for examples of amendments that require republication.

1505.01(c)(ii)      Unacceptable Amendments

If the paralegal specialist determines that the amendment is unacceptable, the paralegal specialist must provide written notification to the applicant explaining why the amendment is unacceptable and advising the applicant that:  (1) the request to amend the application may be resubmitted with the statement of use; or (2) the applicant may file a petition to the Director under 37 C.F.R. §§2.84  and 2.146  requesting that jurisdiction be restored to the examining attorney to consider the merits of the amendment.

See TMEP §§1107 et seq. regarding amendments after issuance of the notice of allowance but before the filing of the statement of use.

1505.01(d)      Processing Amendments Filed Between Issuance of the Notice of Allowance and Filing of Statement of Use

Generally, the only amendments that will be entered in a §1(b) application between the issuance of a notice of allowance and the submission of a statement of use are those outlined in TMEP §1107.   See 37 C.F.R. §2.77(a).  All other amendments may be entered during this period only with the express permission of the Director, after consideration on petition under 37 C.F.R. §2.146. If the Director determines that the amendment requires review by the examining attorney, the petition will be denied and the amendment may be resubmitted with the statement of use in order for the applicant to preserve its right to review. 37 C.F.R. §2.77(b).  See TMEP Chapter 1700 regarding petitions and TMEP §§1107–1107.01 for further information about amendments filed between the issuance of a notice of allowance and the submission of a statement of use.

1505.01(e)      Processing Amendments in Cases Where a Request for Extension of Time to Oppose Has Been Filed or Granted

An amendment of an application that is under an extension of time to file an opposition should be processed in accordance with the procedures set forth in TMEP §§1505.01(b)-(d).  The Director retains jurisdiction of such an application until an opposition is actually filed.

It is not necessary for the paralegal specialist to notify the Board of the action taken on the amendment.

The Board will not suspend the potential opposer's time to file a notice of opposition in this situation.   See notice at 68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).

1505.01(f)      Processing Amendments in Cases Where an Opposition Has Been Filed

If the applicant files an amendment after a notice of opposition has been filed, the Board will act on the amendment under 37 C.F.R. §2.133.  The Board has jurisdiction over any application in which an opposition has been filed.  See TBMP §§514 et seq. for further information about amendment of an application during an opposition.

1505.02      Types of Amendments After Publication

The following subsections discuss the most common types of amendments after publication.  Note that there are some restrictions on amendments to §66(a) applications, as discussed below.  In addition, only certain amendments are permitted in §1(b) applications between the issuance of the notice of allowance and filing of the statement of use absent the filing of a petition to the Director under 37 C.F.R. §2.146.   See37 C.F.R. §2.77; TMEP §§1107, 1107.01.

See TMEP §1505.01(a) regarding the form and timing of filing amendments after publication and TMEP §1609 regarding amendment of a registration under §7(e) of the Trademark Act.

1505.02(a)      Amendments to the Identification

If an applicant proposes to amend the identification after publication by restricting or deleting items in the existing identification, and the amendment is otherwise proper, the USPTO will approve the amendment, and the mark will not be republished.  Amendments to add to or broaden the scope of an identification are not permitted at any time.   See 37 C.F.R. §2.71(a); TMEP §§1402.07 et seq.

1505.02(b)      Amendments to Classification  

In an application under §1 or §44, if the applicant proposes to amend the classification after publication, and the amendment is consistent with the current version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, the USPTO will approve the amendment.  Republication is not required.

The international classification in a §66(a) application cannot be changed from the classification assigned by the IB.  37 C.F.R. §2.85(d); see TMEP §1401.03(d).

1505.02(c)      Amendments to Marks  

In an application under §1 or §44, if the applicant proposes to amend the mark after publication, the amendment is not a material alteration of the mark, and the specimen of record or foreign registration (if applicable) supports use of the mark as amended, the USPTO will approve the amendment and will not republish the mark.  If the applicant proposes to amend the mark and the amendment represents a material alteration to the mark, the USPTO will not approve the amendment.   See 37 C.F.R. §2.72; TMEP §§807.13 et seq., 807.14 et seq.

The mark in a §66(a) application cannot be amended.   TMEP §807.13(b).

1505.02(d)      Amendments to the Dates of Use

If, in an application under §1(a), the applicant proposes to amend the dates of use to adopt a date of use that is after the filing date of the application, the USPTO will not approve the amendment.   See 37 C.F.R. §2.71(c)(1).  If, in an application under §1(a), the applicant proposes to amend the dates of use to adopt a date of use that is later than the date originally stated, but before the application filing date, the USPTO will approve the amendment and will republish the mark to provide notice to parties who may have commenced use of a similar mark during the intervening period.  If the applicant proposes to amend the dates of use to adopt a date that is before the date originally stated, the USPTO will approve the amendment and will not republish the mark.  See TMEP §903.04 for further information about amending the dates of use in a pending application, and TMEP §1609.07 regarding amendment of the dates of use after registration.

1505.02(e)      Amendments Adding or Deleting Disclaimers

If an applicant proposes to amend an application after publication to insert a disclaimer, and the amendment is otherwise proper, the USPTO will approve the amendment and will not republish the mark.  Likewise, if the USPTO requests the insertion of a disclaimer after publication and the applicant agrees to the disclaimer, the USPTO will enter the disclaimer and will not republish the mark.

If an applicant proposes to amend the application to delete a disclaimer after publication and before issuance of the notice of allowance or registration certificate, and the USPTO determines that the amendment is acceptable, the USPTO will approve the amendment in accordance with the procedures in TMEP §1505.01(c)(i), and will republish the mark.  If the amendment deleting the disclaimer is unacceptable, the USPTO will follow the procedures in TMEP §1505.01(c)(ii).  The applicant may then resubmit the amendment with the statement of use, or petition the Director to restore jurisdiction of the application to the examining attorney to consider the amendment.   See 37 C.F.R. §2.84(a).  If the examining attorney eventually approves the amendment, the USPTO will republish the mark.

Republication is generally required when a disclaimer is deleted after publication (e.g., if printed through a clerical error or originally required by the examining attorney and later determined to be unnecessary).

Exception:  If the applicant proposes to amend the mark after publication to delete matter that was the subject of a disclaimer (e.g., generic wording), the USPTO determines that the amendment is not a material alteration of the mark, and the applicant also requests that the disclaimer be deleted, the USPTO will approve the amendment and will not republish the mark.

1505.02(f)    Amendment of the Basis

In an application that is not the subject of an inter partes proceeding before the Board, if an applicant wants to add or substitute a basis after publication, the applicant must petition the Director to allow the examining attorney to consider the amendment.  If the Director grants the petition, and the examining attorney accepts the added or substituted basis, the mark must be republished.  37 C.F.R. §2.35(b)(2); TMEP §806.03(j).  See TMEP §806.03 regarding amending the basis generally and 37 C.F.R. §2.133(a)  and TBMP §514  regarding amending the basis of an application that is the subject of an inter partes proceeding before the Board.

In a §66(a) application, the applicant may not change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Act, 15 U.S.C. §1141j(c),  and 37 C.F.R. §7.31.  37 C.F.R. §2.35(a).  See TMEP §§1904.09 et seq. regarding transformation.

In a multiple-basis application, the applicant may delete a basis at any time prior to registration.  37 C.F.R. §2.35(b)(1).  No petition is required.  See TMEP §806.04(a) regarding the deletion of a §1(b) basis after publication or issuance of the notice of allowance.

1505.02(g)    Amendments to the Applicant’s Name, Citizenship, or Entity Type  

If an applicant proposes to amend an application after publication to correct an inadvertent error in the manner in which its name, entity type, or citizenship is set forth, and the amendment is otherwise proper, the USPTO will approve the amendment and will not republish the mark.  See TMEP §1201.02(c) for examples of correctable and non-correctable errors in identifying the applicant.

1505.03    Republication for Opposition

The following sections list examples of post-publication amendments that require republication of the mark and those that do not require republication.  If a mark that is the subject of a request for an extension of time to oppose will be republished, the paralegal specialist or the examining attorney who orders the republication must notify the Board that the mark will be republished.  See TBMP §214  regarding the effect of republication on marks that are republished during the original thirty-day opposition period or within a granted extension period.

1505.03(a)    When Republication Is Required

Republication is required after entry of any acceptable post-publication amendment that expands the applicant’s rights or would otherwise require notice to third parties.  The following list, though not exhaustive, provides examples of amendments that would require republication of the mark:

  • Amendment adds or substitutes a basis ( see37 C.F.R. §2.35(b)(2) );
  • Unnecessary §2(f) claim is deleted;
  • Unnecessary disclaimer is deleted;
  • A product, service, or class was deleted by USPTO error and is reinserted into the application;
  • A product, service, or class was deleted due to partial abandonment ( see TMEP §718.02(a)) and is reinserted upon granting of petition to revive;
  • Identification is amended to an identification that is narrower in scope than the published identification, but results in a material difference in the nature of the goods/services/collective membership organization (e.g., the mark published for "shoes" in Class 25 and the applicant then amends to "orthopedic shoes" in Class 10);
  • An incorrect mark was published due to USPTO error;
  • The effective filing date ( see TMEP §§206 et seq.) changes to a later date;
  • The priority filing date under §44(d) (see TMEP §1003) is corrected to a later date;
  • In a §1(a) application, either the date(s) of first use or the date(s) of first use in commerce is amended to a date(s) that is later than the date(s) stated (but earlier than the filing date of the application);
  • In a §1(b) application for which an amendment to allege use has been filed, either the date(s) of first use or the date(s) of first use in commerce is amended to a date(s) that is later than the date(s) stated (but earlier than the filing date of the amendment to allege use);
  • Application is amended to the Principal Register from the Supplemental Register;
  • Application is amended from a trademark or service mark to certification mark or vice versa;
  • An application with a §44(e) basis is amended to rely on a different foreign registration after publication.

1505.03(b)    When Republication Is Not Required

Republication is not required after entry of acceptable post-publication amendments in the following situations:

  • The mark is amended, and the USPTO determines that the amendment is not a material alteration of the mark;
  • A multiple-basis application is amended to delete a §1(b) basis;
  • The priority filing date under §44(d) (see TMEP §1003) is corrected to an earlier date;
  • Identification is amended to adopt an identification that is narrower in scope than the published identification and there is no material difference in the nature of the goods/services/collective membership organization (e.g., republication is not required if the mark published for "shoes" in Class 25 and the applicant amends to "shoes, namely, running shoes" in Class 25);
  • An application that published on the Principal Register is amended to the Supplemental Register;
  • The filing date ( see TMEP §§206 et seq.) is amended to an earlier date ( Note :  The filing date change must be approved by the Office of the Deputy Commissioner for Trademark Examination Policy.);
  • The date(s) of first use or date(s) of first use in commerce is amended to adopt a date(s) that is earlier than the date(s) originally stated;
  • The goods/services/collective membership organization published in the wrong class;
  • A disclaimer is added;
  • A §2(f) claim is added;
  • The applicant’s name, citizenship, or entity type is amended to correct an inadvertent error;
  • In a §1(b) application for which a statement of use has been filed, either the date(s) of first use or the date(s) of first use in commerce is amended to a date(s) that is later than the date(s) stated (but earlier than the statutory deadline for filing the statement of use);
  • An amendment to show the dates of use in one or more classes for a multiple-class application that published without the dates showing in those classes, when the dates of use appeared on the allegation of use and are the same as or earlier than those that published for the other classes.
  • A statement of concurrent use is added.