1505.02 Types of Amendments After Publication

The following subsections discuss the most common types of amendments after publication. Note that there are some restrictions on amendments to §66(a) applications, as discussed below. In addition, only certain amendments are permitted in §1(b) applications between the issuance of the notice of allowance and filing of the statement of use absent the filing of a petition to the Director under 37 C.F.R. §2.146. See 37 C.F.R. §2.77; TMEP §§1107, 1107.01.

See TMEP §1505.01(a) regarding the form and timing of filing amendments after publication and §1609 regarding amendment of a registration under §7(e) of the Trademark Act.

1505.02(a) Amendments to the Identification

If an applicant proposes to amend the identification after publication by restricting or deleting items in the existing identification, and the amendment is otherwise proper, the USPTO will approve the amendment, and the mark will not be republished. Amendments to add to or broaden the scope of an identification are not permitted at any time. See 37 C.F.R. §2.71(a); TMEP §§1402.07-1402.07(e).

1505.02(b) Amendments to Classification

In an application under §1 or §44, if the applicant proposes to amend the classification after publication, and the amendment is consistent with the current version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, the USPTO will approve the amendment. Republication is not required.

The international classification in a §66(a) application cannot be changed from the classification assigned by the IB. 37 C.F.R. §2.85(d); see TMEP §1401.03(d).

1505.02(c) Amendments to Marks

In an application under §1 or §44, if the applicant proposes to amend the mark after publication, the amendment is not a material alteration of the mark, and the specimen of record or foreign registration (if applicable) supports use of the mark as amended, the USPTO will approve the amendment and will not republish the mark. If the applicant proposes to amend the mark and the amendment represents a material alteration to the mark, the USPTO will not approve the amendment. See 37 C.F.R. §2.72; TMEP §§807.13-807.13(b), 807.14-807.14(f).

The mark in a §66(a) application cannot be amended. TMEP §807.13(b).

1505.02(d) Amendments to the Dates of Use

If, in an application under §1(a), the applicant proposes to amend the dates of use to adopt a date of use that is after the filing date of the application, the USPTO will not approve the amendment. See 37 C.F.R. §2.71(c)(1). If, in an application under §1(a), the applicant proposes to amend the dates of use to adopt a date of use that is later than the date originally stated, but before the application filing date, the USPTO will approve the amendment and will republish the mark to provide notice to parties who may have commenced use of a similar mark during the intervening period. If the applicant proposes to amend the dates of use to adopt a date that is before the date originally stated, the USPTO will approve the amendment and will not republish the mark. See TMEP §903.04 for further information about amending the dates of use in a pending application, and §1609.07 regarding amendment of the dates of use after registration.

1505.02(e) Amendments Adding or Deleting Disclaimers

If an applicant proposes to amend an application to insert a disclaimer after publication and before issuance of the notice of allowance or registration certificate, and the amendment is otherwise proper, the USPTO will approve the amendment and will not republish the mark. If the notice of allowance has issued, an amendment to insert a disclaimer may not be submitted as a post publication amendment. It must be submitted in a TEAS Petition to Director under Trademark Rule 2.146. See 37 C.F.R. §§2.77(b), 2.146. Likewise, if the USPTO requests the insertion of a disclaimer after publication and the applicant agrees to the disclaimer, the USPTO will enter the disclaimer and will not republish the mark.

If an applicant proposes to amend the application to delete a disclaimer after publication and before issuance of the notice of allowance or registration certificate, and the USPTO determines that the amendment is acceptable, the USPTO will approve the amendment in accordance with the procedures in TMEP §1505.01(c)(i), and will republish the mark. If the amendment deleting the disclaimer is unacceptable, the USPTO will follow the procedures in TMEP §1505.01(c)(ii).

A request to delete a disclaimer after issuance of the notice of allowance and before the filing of a statement of use is not permitted. Between the issuance of the notice of allowance and the filing of a statement of use, the Office cannot republish the application or issue an Office action regarding the request. Instead, the applicant may submit the amendment with the statement of use.

Republication is generally required when a disclaimer is deleted after publication (e.g., if printed through a clerical error or originally required by the examining attorney and later determined to be unnecessary).

Exception: If the applicant proposes to amend the mark after publication to delete matter that was the subject of a disclaimer (e.g., generic wording), the USPTO determines that the amendment is not a material alteration of the mark, and the applicant also requests that the disclaimer be deleted, republication is not required.

1505.02(f) Amendment of the Basis

In an application that is not the subject of an inter partes proceeding before the Board, if an applicant wants to add or substitute a basis after publication, the applicant must file a TEAS Petition to Director to request that the examining attorney consider the amendment. If the Director grants the petition, and the examining attorney accepts the added or substituted basis, the mark must be republished. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j). See TMEP §806.03 regarding amending the basis generally and 37 C.F.R. §2.133(a) and TBMP §514 regarding amending the basis of an application that is the subject of an inter partes proceeding before the Board.

In a §66(a) application, the applicant may not change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a). See TMEP §§1904.09-1904.09(b) regarding transformation.

In a multiple-basis application, the applicant may delete a basis at any time prior to registration. 37 C.F.R. §2.35(b)(1); TMEP §806.04. No petition is required. See TMEP §806.04(a) regarding the deletion of a §1(b) basis after publication or issuance of the notice of allowance.

1505.02(g) Amendments to the Applicant’s Name, Citizenship, or Entity Type

If an applicant proposes to amend an application after publication to correct an inadvertent error in the manner in which its name, entity type, or citizenship is set forth, and the amendment is otherwise proper, the USPTO will approve the amendment and will not republish the mark. See TMEP §1201.02(c) regarding correcting errors in how the applicant is identified, including examples of correctable and non-correctable errors in identifying the applicant.