1716.04(d)    Deleting Goods and/or Services or Surrendering the Registration

A registrant may respond to an Office action in an expungement or reexamination proceeding by submitting a response that deletes some or all of the goods and/or services at issue in the proceeding or surrenders the entire registration for cancellation. See 37 C.F.R. §2.93(d). An acceptable deletion will be immediately effective, and the deleted goods and/or services may not be reinserted into the registration. 37 C.F.R. §2.93(d)(1). No other amendment to the identification of goods and/or services in a registration will be permitted as part of the proceeding. 37 C.F.R. §2.93(d). If goods and/or services that are subject to an expungement or reexamination proceeding are deleted after the filing, and before the acceptance, of an affidavit or declaration under §8 or §71, the deletion will be subject to the fee under 37 C.F.R. §2.161(c)  or 37 C.F.R. §7.37(c). 37 C.F.R. §2.93(d)(1).

In addition, a registrant may submit a separate request to surrender the subject registration for cancellation under 37 C.F.R. §2.172  or a request to amend the registration under 37 C.F.R. §2.173. However, the mere filing of these requests will not constitute a sufficient response to an Office action requiring the registrant to provide evidence of use of the mark in the expungement or reexamination proceeding. The registrant must affirmatively notify the USPTO of the separate request in a timely response to the Office action. See 37 C.F.R. §2.93(d)(2).

Any deletion of goods and/or services at issue in a pending proceeding requested in a response, a surrender for cancellation under 37 C.F.R. §2.172, or an amendment of the registration under 37 C.F.R. §2.173, shall render the proceeding moot as to those goods and/or services, and the USPTO will not make any further determination regarding the registrant’s use of the mark in commerce as to those goods and/or services.

See TMEP §1604.09(b) regarding deletion of goods/services/classes from a registration after submission and prior to acceptance of a §8 affidavit or declaration, §1608 regarding surrendering a registration for cancellation, §1609.03 regarding deletion of goods and/or services in a registration where no fee is required, and §1613.09(b) regarding deletion of goods/services/classes from a registration after submission and prior to acceptance of a §71 affidavit or declaration.