1505.01(a)    Requirement for Representation, and Form and Timing of Amendments

Requirement for Representation of Non-U.S.-domiciled Applicants. An applicant’s domicile will determine whether the applicant is required to be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory (a qualified U.S. attorney). 37 C.F.R. §§2.11(a), 11.1, 11.14(e); TMEP §601. An applicant whose domicile is not located within the United States or its territories must be represented by a qualified U.S. attorney. 37 C.F.R §2.11(a); TMEP §601. See TMEP §601 regarding determining domicile and §602 regarding persons authorized to practice before the USPTO in trademark matters.

If the USPTO receives a post-publication amendment filed by an unrepresented foreign domiciliary, an attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will follow the procedures in TMEP §601.01(a) and grant the applicant 60 days to appoint a qualified U.S. attorney. If the applicant does not appoint a qualified U.S. attorney within the time allowed, the amendment will not be reviewed.

Form of amendments. All amendments filed after publication must be submitted in writing and signed by a proper party.  37 C.F.R. §2.193(e)(2). Unless a notice of opposition has been filed, the USPTO generally requires that amendments filed after publication but before issuance of a registration or notice of allowance be filed using the TEAS Post-Publication Amendment form at https://teas.uspto.gov/.

Requests to correct minor typographical errors entered by the USPTO must also be submitted in writing and signed by a proper party using the same TEAS Post-Publication Amendment form. See 37 C.F.R. §2.193(e)(2). Inquiries regarding the procedure for submitting a post-publication amendment, or questions regarding the status of a pending post-publication amendment, can be made by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 or emailing TrademarkAsistanceCenter@uspto.gov.

Any amendment filed during the pendency of an inter partes opposition proceeding must be filed directly with the Board via ESTTA. See TBMP §110.01; TMEP §1505.01(f).

Timing of amendments. The USPTO cannot process any amendment filed during the time periods in which the mark cannot be withdrawn from publication in the Trademark Official Gazette or from issuance of a registration.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(g).  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 §§1609-1609.12 regarding amendment of a registration under §7(e) of the Trademark Act.