1505.03    Republication for Opposition

The following sections list examples of post-publication amendments that require republication of the mark and those that do not require republication.  If a mark that is the subject of a request for an extension of time to oppose will be republished, the paralegal specialist or the examining attorney who orders the republication must notify the Board that the mark will be republished.  See TBMP §214  regarding the effect of republication on marks that are republished during the original thirty-day opposition period or within a granted extension period.

1505.03(a)    When Republication Is Required

Republication is required after entry of any acceptable post-publication amendment that expands the applicant’s rights or would otherwise require notice to third parties.  The following list, though not exhaustive, provides examples of amendments that would require republication of the mark:

  • Amendment adds or substitutes a basis ( see37 C.F.R. §2.35(b)(2) );
  • Unnecessary §2(f) claim is deleted;
  • Unnecessary disclaimer is deleted;
  • A product, service, or class was deleted by USPTO error and is reinserted into the application;
  • A product, service, or class was deleted due to partial abandonment ( see TMEP §718.02(a)) and is reinserted upon granting of petition to revive;
  • Identification is amended to an identification that is narrower in scope than the published identification, but results in a material difference in the nature of the goods/services/collective membership organization (e.g., the mark published for "shoes" in Class 25 and the applicant then amends to "orthopedic shoes" in Class 10);
  • An incorrect mark was published due to USPTO error;
  • The effective filing date ( see TMEP §§206 et seq.) changes to a later date;
  • The priority filing date under §44(d) (see TMEP §1003) is corrected to a later date;
  • In a §1(a) application, either the date(s) of first use or the date(s) of first use in commerce is amended to a date(s) that is later than the date(s) stated (but earlier than the filing date of the application);
  • In a §1(b) application for which an amendment to allege use has been filed, either the date(s) of first use or the date(s) of first use in commerce is amended to a date(s) that is later than the date(s) stated (but earlier than the filing date of the amendment to allege use);
  • Application is amended to the Principal Register from the Supplemental Register;
  • Application is amended from a trademark or service mark to certification mark or collective mark or vice versa;
  • An application with a §44(e) basis is amended to rely on a different foreign registration after publication.

1505.03(b)    When Republication Is Not Required

Republication is not required after entry of acceptable post-publication amendments in the following situations:

  • The mark is amended, and the USPTO determines that the amendment is not a material alteration of the mark;
  • A multiple-basis application is amended to delete a §1(b) basis;
  • The priority filing date under §44(d) (see TMEP §1003) is corrected to an earlier date;
  • Identification is amended to adopt an identification that is narrower in scope than the published identification and there is no material difference in the nature of the goods/services/collective membership organization (e.g., republication is not required if the mark published for "shoes" in Class 25 and the applicant amends to "shoes, namely, running shoes" in Class 25);
  • An application that published on the Principal Register is amended to the Supplemental Register;
  • The filing date ( see TMEP §§206 et seq.) is amended to an earlier date ( Note :  The filing date change must be approved by the Office of the Deputy Commissioner for Trademark Examination Policy.);
  • The date(s) of first use or date(s) of first use in commerce is amended to adopt a date(s) that is earlier than the date(s) originally stated;
  • The goods/services/collective membership organization published in the wrong class;
  • A disclaimer is added;
  • A §2(f) claim is added;
  • The applicant’s name, citizenship, or entity type is amended to correct an inadvertent error;
  • In a §1(b) application for which a statement of use has been filed, either the date(s) of first use or the date(s) of first use in commerce is amended to a date(s) that is later than the date(s) stated (but earlier than the statutory deadline for filing the statement of use);
  • An amendment to show the dates of use in one or more classes for a multiple-class application that published without the dates showing in those classes, when the dates of use appeared on the allegation of use and are the same as or earlier than those that published for the other classes.
  • A statement of concurrent use is added.