1904.13 Amendment and Correction of Registered Extension of Protection to the United States
All requests to record changes to an international registration and associated extensions of protection must be filed at the International Bureau (IB). Accordingly, the holder of a registered extension of protection of an international registration to the United States may file a request for amendment or correction 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. See TMEP §1609.01(a), §1609.02, §1904.13(a), and §1904.13(b) for further information.
1904.13(a) Limited Amendments to Registered Extension of Protection
The holder of a registered extension of protection may request certain changes under §7 of the Trademark Act, 15 U.S.C. §1057, that will affect only the extension of protection in the United States. For example, an applicant may request to amend the registered extension of protection to add a voluntary disclaimer, to amend the translation of the mark as provided during examination, or to limit or partially delete goods, services, or classes. TMEP §1609.01(a). 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 also TMEP §§1906.01-1906.01(i) regarding requests to record changes at the IB.
1904.13(b) Corrections to Registered Extensions 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. For example, if there was a minor typographical error in an amendment to the identification of goods in a §66(a) application, and the mark registered with such an error, the owner of the registration could request correction. If the USPTO grants the request, the USPTO will notify the IB of the change to the extension of protection to the United States.
If a clerical error occurred through the fault of the USPTO, which is apparent from a review of USPTO records, the USPTO will correct the error without charge. See TMEP §1609.10(a) for procedures for requesting correction of a USPTO error and §1609.10(b) regarding correction of a registrant’s error.