1609.10 Correction of Mistake in Registration
The USPTO may make a correction to a registration in appropriate cases, upon written request by the owner of the registration. See §7(g) of the Trademark Act, 37 C.F.R. §2.174, and TMEP §1609.10(a) regarding correction of USPTO errors; and §7(h) of the Act, 37 C.F.R. §2.175, and TMEP §1609.10(b) regarding correction of errors by the owner of a registration. Original certificates of registration need not be submitted with requests for correction under §7, and owners are strongly discouraged from submitting them. If original certificates are submitted, they will be scanned into TICRS and discarded. See notice at 69 FR 51362 (Aug. 19, 2004), removing the requirement that a section 7 request include the original certificate.
Requests for correction of registrations are handled by the Post Registration Section.
If the request for correction is granted, the USPTO sends an updated registration certificate to the owner of record, and updates USPTO records to show the correction.
1609.10(a) Correction of USPTO Error
Registered Extension of Protection
If USPTO records show that a clerical error occurred through the fault of the USPTO, the USPTO will correct the error without charge. See TMEP §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
If a clerical error occurred through the fault of the USPTO, the USPTO will correct the error without charge. 15 U.S.C. §1057(g); 37 C.F.R. §2.174. Section 7(g) gives the Director the discretion to issue a certificate of correction of the existing registration, or to issue a new certificate of registration without charge.
The owner of the registration should submit a written request, specifying the error to be corrected. This request should be signed by the individual owner of the registration, someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner of a partnership), or the owner’s qualified practitioner, and directed to the Post Registration Section.
The USPTO will issue a certificate of correction if the change is non-material, such as a slight misspelling in the mark or the identification of goods/services, or an error in entering the owner’s name or address.
A USPTO error in classification may be corrected if the requested classification is consistent with the current version of the Nice Agreement . Republication is not required.
If correction of a USPTO error would result in a material change such that republication is required (e.g. , a material change of the mark because the wrong mark published or a broadening of the identification of goods/services because goods/services were deleted in error), the USPTO will not issue a certificate of correction under §7(g). Section 12(a) of the Trademark Act, 15 U.S.C. §1062(a), requires examination and publication prior to registration. Therefore, the error can be corrected only by canceling the registration as inadvertently issued and republishing the mark with the correct information. Depending on the circumstances, the USPTO may give the owner the option of either: (1) keeping the registration as issued; or (2) having the registration cancelled as inadvertently issued and republishing the mark. If the mark is republished, and registration is not successfully opposed, the USPTO will issue a new certificate of registration with a new registration date.
In some cases, further examination may be required to correct a USPTO error that would materially change the registration, e.g. , where a proposed amendment to the mark or the identification of goods/services was filed prior to registration, but not timely made of record and reviewed by the examining attorney. In this situation, the registration will be cancelled as inadvertently issued and the application will be returned to examination. The examining attorney will examine the amendment using standard examination procedures. If the examining attorney approves the amendment, the mark will be republished. If the amendment is not acceptable, the examining attorney will issue a non-final Office action with a six-month response clause.
A request to have a registration cancelled as inadvertently issued should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy.
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 et seq . regarding requests to record changes at the IB, and TMEP §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 written request specifying the error, explaining how the error occurred, and showing that it occurred in good faith. 37 C.F.R. §2.175(b)(1). The request must be signed and verified or supported by a declaration under 37 C.F.R. §2.20 by the individual owner, someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §2.175(b)(2). In the case of joint owners who are not represented by a qualified practitioner, all must sign. 37 C.F.R. §2.193(e)(6). The request for correction should be directed to the Post Registration Section. See TMEP §§611.06 et seq . for guidelines on persons with legal authority to bind various types of juristic entities, and TMEP §§602 et seq . regarding persons who are qualified to represent others before the USPTO in trademark cases.
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 TMEP §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 and 2.175(b)(3).