1609.01 Amendment of Registration - In General
1609.01(a) Limited Amendments to Registered Extension of Protection
An extension of protection of an international registration remains part of (and dependent on) the international registration even after registration in the United States. 15 U.S.C. §1141j; 37 C.F.R. §7.30; TMEP §§1601.01(c), 1904.08. All requests to record changes to an international registration must be filed at the IB.
Accordingly, the holder of a registered extension of protection may file a request for amendment 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. For example, a holder may request to amend the registered extension of protection to add a voluntary disclaimer, to amend the translation of the mark that was provided during examination in the USPTO, or to limit or partially surrender goods/services/classes. 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 TMEP §§1904.13-1904.13(b) regarding amendment and correction of registered extensions of protection, and §§1906.01-1906.01(i) regarding requests to record changes at the IB.
1609.01(b) Amendment of Registration Resulting from §1 or §44 Application
Under §7(e) of the Trademark Act, a registration based on an application under §1 or §44 of the Trademark Act may be amended "for good cause." Any request for amendment of a mark must be accompanied by the required fee. 15 U.S.C. §1057(e); 37 C.F.R. §2.173(b)(1). To request amendment, the owner of the registration must submit a TEAS Section 7 Request for Amendment or Correction of Registration Certificate form specifying the requested amendment. The request must be submitted through TEAS unless the owner is a national of a country exempted from the requirement to file through TEAS. See 37 C.F.R §2.23(a)-(c). This request must be properly signed in accordance with the guidelines in TMEP §611.03(f).
When it appears that a response to an Office action regarding the Section 7 request is signed by an improper party, the Post Registration staff must follow the procedures in TMEP §§611.05-611.05(c).
Requests to amend registrations are handled by the Post Registration Section, unless the registration is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board. 37 C.F.R. §2.173(a).
Requests to amend registrations that are the subject of inter partes proceedings before the Trademark Trial and Appeal Board are handled by the Board. See37 C.F.R. §2.133; TBMP §§514-514.03. If a request to amend a registration that is the subject of an inter partes proceeding is filed with the Post Registration Section, the Post Registration staff will deny the request, and advise the owner to file a motion to amend pursuant to 37 C.F.R. §2.133. See TBMP §§502-502.07 for further information about filing motions with the Board.
If the request for amendment is granted, the USPTO sends an updated registration certificate showing the amendment to the owner of record, and updates USPTO records accordingly.