1609.01 Amendment of Registration - In General
1609.01(a) Limited Amendments to Registered Extension of Protection
An extension of protection of an international registration remains part of (and dependent on) the international registration even after registration in the United States. 15 U.S.C. §1141j; 37 C.F.R. §7.30; TMEP §§1601.01(c), 1904.08. All requests to record changes to an international registration must be filed at the IB.
Accordingly, the holder of a registered extension of protection may file a request for amendment under §7 of the Trademark Act with the USPTO only in limited circumstances, where the change will affect only the extension of protection to the United States. For example, a holder may request to amend the registered extension of protection to add a voluntary disclaimer, to amend the translation of the mark that was provided during examination in the USPTO, or to limit or partially surrender goods/services/classes. If the USPTO grants the §7 request, the USPTO will notify the IB of the change to the extension of protection to the United States.
The USPTO will not accept an amendment of a registered extension of protection involving the holder’s name or address that has not been recorded with the IB. 37 C.F.R. §7.22; TMEP §1906.01(c).
The mark in a registered extension of protection cannot be amended. See TMEP §§1609.02, 1906.01(i).
See TMEP §§1904.13 et seq. regarding amendment and correction of registered extensions of protection, and 1906.01 et seq. regarding requests to record changes at the IB.
1609.01(b) Amendment of Registration Resulting from §1 or §44 Application
Under §7(e) of the Trademark Act, a registration based on an application under §1 or §44 of the Trademark Act may be amended "for good cause." Any request for amendment of a mark must be accompanied by the required fee. 15 U.S.C. §1057(e); 37 C.F.R. §§2.6, 2.173(b)(1). Original certificates of registration are not required for requests for amendment under §7, and owners are strongly discouraged from submitting them. If original certificates are submitted, they will be scanned into TICRS and discarded. See notice at 69 FR 51362 (Aug. 19, 2004), removing the requirement that a section 7 request include the original certificate.
The request for amendment must be signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by the individual owner of the registration, someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §§2.173(b)(2), 2.193(e)(6). In the case of joint owners who are not represented by a qualified practitioner, all must sign. 37 C.F.R. §2.193(e)(6). See TMEP §§611.06 et seq. for guidelines on persons with legal authority to bind various types of juristic entities, and TMEP §§602 et seq. regarding persons who are qualified to represent others before the USPTO in trademark cases.
Requests to amend registrations are handled by the Post Registration Section, unless the registration is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board. 37 C.F.R. §2.173(a).
Requests to amend registrations that are the subject of inter partes proceedings before the Trademark Trial and Appeal Board are handled by the Board. See37 C.F.R. §2.133; TBMP §§514 et seq. If a request to amend a registration that is the subject of an inter partes proceeding is filed with the Post Registration Section, the Post Registration staff will deny the request, and advise the owner to file a motion to amend pursuant to 37 C.F.R. §2.133. See TBMP §§502 et seq. for further information about filing motions with the Board.
If the request for amendment is granted, the USPTO sends an updated registration certificate showing the amendment to the owner of record, and updates USPTO records accordingly.