1904.02(e) Corrections and Limitations to the International Registration

1904.02(e)(i) Corrections

When the IB determines that there is an error concerning an international registration in the International Register, it corrects that error ex officio. Requests for correction may be submitted to the IB by the holder (i.e., a §66(a) applicant seeking protection in U.S.), the Office of Origin of the international application, or in some cases by the USPTO Administrator for Trademark Classification Policy and Practice.

Corrections that merely reclassify the originally identified goods/services may be accepted; however, any indefinite wording of the identification of such goods/services that was acceptably amended during the course of USPTO examination will remain as amended, that is, the amended wording is not affected or changed by the correction issued by the IB. When an applicant amends the identification of goods/services in a manner that is acceptable to the examining attorney, including voluntary deletion of goods/services, the amendment replaces all previous identifications, and thus restricts the scope of goods/services to that amended language. See TMEP §1402.07(e).

1904.02(e)(ii) Limitations

The holder of an international registration may record a limitation of the good/services, which may affect some or all of the designated Contracting Parties. Article 9 bis(iii). Upon recordation, the IB will notify the USPTO if the U.S. is affected by the limitation. The recording of a limitation does not remove the goods/services concerned from the international registration, but simply narrows the goods/services for which the holder seeks protection in the particular countries affected.

A limitation may set forth particular goods/services narrower in scope than the goods/services as identified in the international registration. For example, if the international registration covers "clothing," the holder may limit the goods to "sweaters and pants" with respect to the U.S. Upon notification by the IB, if the examining attorney considers that the change requested is not in fact a limitation but an expansion of the list of goods/services, or is otherwise unacceptable, then the USPTO may declare that the limitation has no effect in the United States. Common Regs. 27(5)(a)-(c). For example, if the goods are identified as "clothing" in the international registration, and the limitation specifies "sweaters and hair bows," the examining attorney must refuse to apply the "hair bows" portion of the limitation to the request for extension of protection to the United States because it expands, rather than limits, the scope of the goods of the international registration.

See TMEP §1906.01(e) regarding the filing of a request to record a limitation with the IB; TMEP §1904.03(g) regarding limitations in pending §66(a) applications; and TMEP §1904.15 regarding limitations in registered extensions of protection to the United States.

1904.02(e)(iii) Limitations vs. Amendments

To the extent that an amendment of the identification in a §66(a) application narrows or restricts the goods/services, an amendment is comparable to a limitation affecting only the United States. A limitation filed at the IB by the applicant clarifying the nature of the goods/services may render the identification of goods/services in the §66(a) application sufficiently definite. Nevertheless, if the examining attorney has issued an Office action requiring amendment of the identification of goods/services, a proper response to the Office action must be received in the allowed time period. Simply recording a limitation with the IB is not a response to an Office action. The applicant must file a response with the USPTO within six months of the date on which the USPTO issued the Office action, stating that the applicant has recorded a limitation that will resolve the outstanding issue(s).