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. The owner of the registration must submit a TEAS Section 7 Request for Amendment or Correction of Registration Certificate form specifying the error to be corrected, unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a); TMEP §301.01. See TMEP §301.02 regarding the limited exceptions for paper submissions. This request must be properly signed in accordance with the guidelines in TMEP §611.03(f). 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.

If the request for correction is granted, the USPTO updates its 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. The owner of the registration must submit a TEAS Section 7 Request for Amendment or Correction of Registration Certificate form specifying the error to be corrected, unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a); SeeTMEP §301.01 for more information about electronic filing. See TMEP §301.02 regarding the limited exceptions for paper submissions. This request must be properly signed in accordance with the guidelines in TMEP §611.03(f). 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 must submit a TEAS Section 7 Request for Amendment or Correction of Registration Certificate form, specifying the error to be corrected, unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a); See TMEP §301.01 for more information about electronic filing. See TMEP §301.02 regarding the limited exceptions for paper submissions.  This request must be properly signed in accordance with the guidelines in TMEP §611.03(f).

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, including the period of time since registration and the nature of the error, 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, depending on the circumstances, including the period of time since registration, the registration may be cancelled as inadvertently issued and the application 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 three-month response clause. See TMEP §705.08.

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 §§1906.01-1906.01(i) regarding requests to record changes at the IB and §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 Trademark Act §7(h), 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 TEAS Section 7 Request for Amendment or Correction of Registration Certificate form specifying the error, explaining how the error occurred, and showing that it occurred in good faith. See 37 C.F.R. §2.175(b)(1). The request must be submitted through TEAS unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a). See TMEP §301.01 for more information about electronic filing and TMEP §301.02 regarding the limited exceptions for paper submissions. The request must be properly signed in accordance with the guidelines in TMEP §611.03(f).

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 §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. For example, a registration can be corrected where the named entity did not exist on the application filing date but is the same, single commercial enterprise that has owned the mark, the application, and the resulting registration the entire time. Phat Scooters, Inc. v. Fatbear Scooters, LLC, 2023 USPQ2d 486, at *3 (TTAB 2023). 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.

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, 2.175(b)(3).