1609.10(b)    Correction of Owner’s Error

Registered Extension of Protection

Generally, all requests to record changes to an international registration must be filed at the IB, because an extension of protection of an international registration remains part of the international registration even after registration in the United States.  However, in the limited circumstance where the holder of an international registration makes a mistake in a document filed during prosecution in the USPTO that affects only the extension of protection to the United States, the registrant may request correction of the error pursuant to 37 C.F.R. §2.175.   See TMEP §1904.13(b).  

See TMEP §1906 and §§1906.01-1906.01(i) regarding requests to record changes at the IB and §1904.14 regarding a notification of correction in the International Register with respect to a registered extension of protection.

Registration Based on Application under §1 or §44

Under §7(h) of the Trademark Act, 15 U.S.C. §1057(h), if a mistake in a registration occurs in good faith through the fault of the owner of the registration, the Director may correct the error upon written request and payment of the fee required by 37 C.F.R. §2.6, provided the correction does not result in a change that would require republication of the mark.

The owner of the registration must file a TEAS Section 7 Request for Amendment or Correction of Registration Certificate form specifying the error, explaining how the error occurred, and showing that it occurred in good faith. See 37 C.F.R. §2.175(b)(1). The request must be submitted through TEAS unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a). See TMEP §301.01 for more information about electronic filing. See TMEP §301.02 regarding the limited exceptions for paper submissions. The request must be properly signed in accordance with the guidelines in TMEP §611.03(f).

As noted above, the owner of a registration cannot correct a mistake if the changes would require republication of the mark.  15 U.S.C. §1057(h); 37 C.F.R. §2.175(a).  Thus, a correction cannot be made if it would materially alter the mark, or broaden the identification of goods/services.  See TMEP §807.14 and §1609.02(a) regarding material alteration and §1609.03 regarding changes to the identification of goods/services.

A registration can be corrected to cure an inadvertent error in the manner in which the owner’s name is set forth.  However, the registration cannot be corrected to substitute another entity as the owner.  See TMEP §1201.02(c) for examples of correctable and non-correctable errors in identifying the owner of an application or registration.

Section 7(h) gives the Director the discretion to issue either a certificate of correction of the existing registration or a new certificate of registration.   See In re Pamex Foods, Inc., 209 USPQ 275, 277-78 (Comm’r Pats. 1980).  In either case, if the mistake was made by the owner of the registration, a fee is required.   See 15 U.S.C. §1057(h); 37 C.F.R. §§2.6, 2.175(b)(3).