1609 Amendment and Correction of Registrations

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.

1609.02 Amendment of Mark

Mark in Registered Extension of Protection Cannot Be Amended

The holder of a registered extension of protection of an international registration to the United States cannot file a request to amend the mark under §7 of the Trademark Act. A registered extension of protection remains part of the international registration, and all requests to record changes to such a registration must be filed at the IB. However, the Madrid Protocol and the Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Regs.) do not permit amendment of the mark in an international registration. If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application. The World Intellectual Property Organization [WIPO] Guide to the Madrid System International Registration of Marks under the Madrid Protocol (Guide to International Registration), ¶ 794, WIPO Doc. 455E/22 (2022), provides as follows:

[T]here is no provision in the legal framework of the Madrid System allowing for an amendment (or alteration) of a mark that is recorded in the International Register. If the holder wishes to protect the mark in a form that differs, even slightly, from the mark as recorded in the International Register, they must file a new international application. This is true even if the mark has been allowed to be changed in the basic mark, where such change is possible according to the law of the member of the Office of origin.

Therefore, the mark in a registered extension of protection cannot be amended.

Although the mark in a registered extension of protection cannot be amended, in some situations the holder of a registered extension of protection may file a request under §7 of the Trademark Act to add a standard character claim. If the international registration does not indicate that the mark is in standard characters, and the holder seeks to amend the registered extension of protection to add a standard character claim, the Post Registration staff must contact the Supervisor of the Madrid Processing Unit (MPU) via email for instructions on how to proceed. The holder may not add a standard character claim unless the mark meets the United States requirements for a standard character claim, as set forth in 37 C.F.R. §2.52(a). See TMEP §§807.03(a)-(b).

Amendment of Mark in Registration Based on §1 or §44 Application

Under §7(e) of the Trademark Act, 15 U.S.C. §1057(e), upon application by the owner and payment of the prescribed fee, a registration based on an application under §1 or §44 of the Trademark Act may be amended for good cause, if the amendment does not materially alter the character of the mark. 37 C.F.R. §2.173(d). See TMEP §§807.14-807.14(f) and 1609.02(a) regarding material alteration. A request to add a standard character claim to a mark designated as a typed drawing must be submitted pursuant to §7(e) and meet all of the requirements for an amendment to a registration that involves a change in the mark, including a new drawing, supporting specimen per class, and declaration. See TMEP §§1609.02(b)–(c).

1609.02(a) Determining What Constitutes Material Alteration of Mark

Section 7(e) of the Trademark Act, 15 U.S.C. §1057(e), prohibits an amendment that materially alters the character of the mark. "Material alteration" is the standard for evaluating amendments to marks at all relevant stages of processing, both during examination of the application and after registration. See 37 C.F.R. §§2.72, 2.173(d); TMEP §807.14 .

In determining whether a proposed amendment is a material alteration of a registered mark, the USPTO will always compare the proposed amendment to the mark as originally registered.

The general test of whether an alteration is material is whether, if the mark in an application for registration had been published, the change would require republication in order to present the mark fairly for purposes of opposition. If republication would be required, the amendment is a material alteration.

An amendment of a registered mark is acceptable if the modified mark contains the essence of the original mark (i.e., the mark as originally registered), and the mark as amended creates essentially the same impression as the original mark. In re Umax Data Sys., Inc., 40 USPQ2d 1539 (Comm’r Pats. 1996). For example, in marks consisting of wording combined with a design, if the word is the essence of the mark and the design is merely background embellishment or display that is not integrated into the mark in any significant way, the removal or change of the design will not be a material alteration of the mark. See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953). On the other hand, if a design is integrated into a mark and is a distinctive feature necessary for recognition of the mark, then a change in the design would materially alter the mark. See In re Dillard Dep't Stores, Inc., 33 USPQ2d 1052 (Comm’r Pats. 1993) (proposed deletion of highly stylized display features of mark "IN•VEST•MENTS" held to be a material alteration); Ex parte Kadane-Brown, Inc., 79 USPQ 307 (Comm’r Pats. 1948) (proposed amendment of "BLUE BONNET" mark to delete a star design and to change the picture of the girl held a material alteration).

When a mark is solely a picture or design, an alteration must be evaluated by determining whether the new form has the same commercial impression as the original mark, i.e., whether the form as altered would be likely to be recognized as the same mark. See Ex parte Black & Decker Mfg. Co., 136 USPQ 379 (Comm’r Pats. 1963) (proposed amendment to delete circle found to be a material alteration, where the circle was determined to be a prominent element of a design mark).

Marks entirely comprised of words can sometimes be varied as to their style of lettering, size, and other elements of form without resulting in a material alteration of the mark. See Ex parte Squire Dingee Co., 81 USPQ 258, recon. denied, 81 USPQ 543 (Comm’r Pats. 1949) (amendment from block lettering to script not a material alteration). However, changing from special form to standard characters, or the reverse, may be a material alteration. TMEP §807.03(d).

A generic or purely informational term may be deleted if the essence of the mark in appearance or meaning is not changed, but a word or feature that is necessary to the significance of the mark may not be deleted. Likewise, a unique or prominent design feature may not be deleted. See In re Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm’r Pats. 1974), overruled on other grounds, In re Umax Data Sys., Inc., 40 USPQ2d 1539 (Comm'r Pats. 1996) (proposed amendment to block lettering from mark comprising a diamond design surrounding the word "FYER-WALL" with an inverted channel bracket around the letters "RW" held a material alteration). See TMEP §807.14(a) regarding amendments deleting matter from a mark.

1609.02(b) New Drawing Required

When applying for an amendment to a registration that involves a change in the mark, the owner of the registration must submit a new drawing displaying the amended mark. 37 C.F.R. §2.173(b)(3). See TMEP §§807-807.18 regarding drawings.

1609.02(c) Supporting Specimens and Declaration

The owner of the registration must submit a specimen showing use of the proposed mark as amended for each class specified in the registration, and must include an affidavit or a declaration under 37 C.F.R. §2.20 stating that the specimen was in use in commerce at least as early as the date the §7 amendment was filed. 37 C.F.R. §2.173(b)(3). When requested by the USPTO, additional specimens must be provided. Id. If a single specimen supports multiple classes, the owner may so indicate by specifying which classes the specimen supports, and the Post Registration staff need not require multiple copies of the specimen. The Post Registration staff should make a Note to the File in the record indicating which classes the specimen supports.

One specimen per class showing use of the proposed mark as amended on or in connection with the goods, services, or collective membership organization is required, even if the mark originally registered based on a foreign registration under §44 of the Trademark Act, 15 U.S.C. §1126(e) or an extension of protection of an international registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a). See TMEP §1015 regarding the independence of a §44 registration from the underlying foreign registration.

Sometimes, it may be necessary for the USPTO to request additional information in order to properly examine the amendment. In such cases, the USPTO will require the owner to furnish such additional information, specimens, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the §7 amendment. 37 C.F.R. §2.173(b)(4).

See TMEP §§904.03-904.04(c) regarding trademark specimens, §§1301.04-1301.04(j) regarding service mark specimens, §1303.01(a)(i)(C) regarding specimens for collective trademarks and collective service marks, §1304.02(a)(i)(C) regarding specimens for collective membership marks, and §1306.02(a)(i)(B) regarding specimens for certification marks. See also TMEP §611.03(f) regarding who can sign a §7 request to amend the registration.

1609.02(d) Conforming Amendments

If a registration includes a disclaimer, description of the mark, and/or other miscellaneous statement (e.g., lining or stippling statement (see TMEP §808.01(b)), translation, transliteration, or color claim), any request to amend the registration must also include a request to make any necessary conforming amendments to the disclaimer, description, and/or miscellaneous statement. 37 C.F.R. §2.173(g). For example, if the mark is "XYZ INC.," with a disclaimer of the entity designator "INC.," and the owner of the registration proposes to amend the mark to remove "INC.," the proposed amendment should also request that the disclaimer be deleted.

If a proposed amendment does not include all necessary conforming amendment(s), the Post Registration staff will issue an Office action requiring the amendment(s).

1609.02(e) Amendment of Black-and-White Drawing of Mark for Which Color Is Claimed to Substitute Color Drawing

Prior to November 2, 2003, the USPTO did not publish marks or issue registrations in color. An applicant who wanted to show color in a mark was required to submit a black-and-white drawing, with a statement describing the color(s). See TMEP §807.07(g). Effective November 2, 2003, the USPTO accepts color drawings. Black-and-white drawings with a color claim, or drawings that show color by use of lining patterns, are no longer permitted. Color drawings must be accompanied by a color claim naming the color(s) that are a feature of the mark, and a separate statement specifying where the color(s) appear(s) on the mark. 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a)-807.07(a)(ii).

In a registration based on an application filed before November 2, 2003, if the application included a black-and-white drawing with a statement claiming color, the owner may file a request under §7 of the Trademark Act to substitute a color drawing for the black-and-white drawing. The request must include: (1) a color drawing showing the same colors claimed in the registration; (2) a color claim naming the color(s) that are a feature of the mark; (3) a description of where the color(s) appear(s) in the mark; and (4) the fee required by 37 C.F.R. §2.6. 37 C.F.R. §2.173(a), (b)(1), (g). No specimen is required if the owner is merely substituting a color drawing for a legally equivalent black-and-white drawing, and is not amending the mark.

1609.02(f) Amendment of Black-and-White Drawing to Color Drawing

A special form drawing registered in black-and-white may be amended under §7(e) to include a claim of color, as long as the amendment does not constitute a material alteration. See 37 C.F.R. §2.173(d). Requests to amend the mark to color must include: (1) a color drawing; (2) a color claim naming the color(s) that are a feature of the mark; (3) a statement specifying where the color(s) appear(s) in the mark; (4) a specimen showing the mark as depicted on the amended drawing; and (5) the fee required by 37 C.F.R. §2.6. 37 C.F.R. §2.173(a), (b)(1), (g). See TMEP §§807.07-807.07(g) regarding requirements for color drawings and §§807.14(e)-807.14(e)(iii) regarding amendments to color features of marks.

1609.02(g) Amendment to Special Form Drawing Containing Black, White, and/or Gray

When a mark shown in special form is amended under §7(e), and the mark shown on the new drawing page contains gray, or the description of the mark refers to black, white, and/or gray, the owner must clarify whether the mark is in color. Specifically, the record must contain either: (1) a statement that the mark is not in color; or (2) a statement that the colors black, white, and/or gray are features of the mark and a statement specifying the location of the colors. If not all are claimed as colors, the color location statement must specify that the black/white/gray is not claimed as color and represents background, outlining, shading, and/or transparent areas.

Likewise, if the §7(e) amendment includes a statement that color is claimed as a feature of the mark and the drawing contains black, white, and/or gray, the record must contain one of the following: (1) a statement that the color(s) black, white, and/or gray are features of the mark and statement specifying the location of the colors; or (2) a statement that the black/white/gray represents background, outlining, shading, and/or transparent areas and is not a part of the mark. No statement regarding a white background is required if the background of the drawing is white and it is clear that the white background is not part of the mark.

See TMEP §§807.07(f)-807.07(f)(ii) regarding requirements for drawings containing black, white, and/or gray.

1609.03 Amendment of Identification

Identification in Registered Extension of Protection

The identification of goods, services, or the description of the nature the collective membership organization in a registered extension of protection of an international registration to the United States may be amended only in limited circumstances that will affect only the extension of protection to the United States. TMEP §1609.01(a). Specifically, the holder of a registered extension of protection may file a request with the USPTO to amend the registered extension of protection to limit or partially surrender goods/services or limit or fully surrender a collective membership organization. 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. See TMEP §1904.13(a).

If the owner amends the registration only to delete goods/services/classes prior to submission of the §71 affidavit or declaration, the owner will not be required to pay a fee. 37 C.F.R §2.6(a)(11)(iii).

All requests to record changes to an international registration must be filed at the IB. See TMEP §§1906.01-1906.01(i) regarding requests to record changes at the IB. Note that the IB does not permit amendments that expand the list of goods/services or broaden the nature of the collective membership organization in an international registration. See TMEP §1906.01(i).

See also TMEP §1904.15 regarding a notification of limitation in the list of goods/services or the nature of the collective membership organization in a registered extension of protection.

Amendment of Registration Based on §1 or §44 Application

In registrations based on applications under §1 and §44 of the Trademark Act, amendments may be made to the identification of goods/services/collective membership organization to restrict the identification or otherwise to change it in ways that would not require republication of the mark. However, goods/services or a collective membership organization may not be added to a registration by amendment. See37 C.F.R. §2.173(e).

In a multiple-class registration, deletion of less than all the goods or services in a single class constitutes an amendment, whereas deletion of an entire class constitutes a surrender of the registration for cancellation as to the class deleted. See37 C.F.R. §2.172. See TMEP §1608 regarding surrender.

If the owner amends the registration only to delete goods/services/classes prior to submission of the §8 affidavit or declaration, the owner will not be required to pay a fee. 37 C.F.R §2.6(a)(11)(iii).

1609.04 Amendment of Classification

Classification in Registered Extension of Protection Cannot Be Amended Under §7

The classification in a registered extension of protection of an international registration to the United States may not be amended under §7 of the Trademark Act. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1609.01(a). However, the holder of a registered extension of protection may request to amend the registered extension of protection to surrender class(es). See TMEP §1904.13(a).

Amendment of Registration Based on §1 or §44 Application

In a registration that issued based on an application under §1 or §44 of the Trademark Act, the classification may be amended under §7 of the Trademark Act, if the requested international classification is consistent with the current version of the Nice Agreement. 37 C.F.R. §2.85(e)(3). In such a case, the USPTO will amend the international classification and issue an updated registration certificate with the new classification noted.

The owner of a registration may reclassify registrations from multiple United States classes into a single international classification. For example, goods in U.S. classes 21 and 26 often fall into only International Class 9. Hence, an owner can request an amendment from U.S. classes 21 and 26 into International Class 9. If the owner reclassifies any of the goods/services in this manner, the owner must reclassify all the goods/services in the registration to the international classification system. 37 C.F.R. §2.85(e)(3).

The amendment must include the fee required by 37 C.F.R. §2.6 for §7 amendments. 37 C.F.R. §2.173(b)(1).

1609.05 Disclaimer of Mark and Claim of Acquired Distinctiveness

Addition/Deletion of Disclaimer. A registered mark may be amended to disclaim part of the mark. 37 C.F.R. §2.173(a). However, no amendment seeking the elimination of a disclaimer will be permitted, unless deletion of the disclaimed portion of the mark is also sought. 37 C.F.R. §2.173(h). This exception to the general prohibition against amendments to delete disclaimers applies in the limited situation where the mark is amended to delete the disclaimed matter. See TMEP §1609.02(d) regarding conforming amendments.

An amended registration must still contain registrable matter, and the mark as amended must be registrable as a whole. 37 C.F.R. §2.173(c).

Addition/Deletion of §2(f) Claim of Acquired Distinctiveness. An amendment under §7 of the Trademark Act seeking the addition or deletion of a §2(f) claim of acquired distinctiveness will not be permitted. 37 C.F.R. §2.173(i).

1609.06 Territorial Restrictions

A registration cannot be restricted territorially by amendment under §7(e) of the Act. In re Forbo, 4 USPQ2d 1415 (Comm’r Pats. 1984). Generally, a concurrent use restriction cannot be removed from a registration by an amendment under §7(e), except where an entity that was the only exception to the owner’s right to exclusive use of its registered mark assigns its rights in the mark to the owner of the registration, so that all rights in the mark are merged in the owner. In re Alfred Dunhill Ltd., 4 USPQ2d 1383 (Comm’r Pats. 1987); TBMP §§1101.02, 1114.

1609.07 Dates of Use

The USPTO will accept a correction request changing the dates of use, even if the corrected dates are later than the dates originally set forth in the registration. See In re Pamex Foods, Inc., 209 USPQ 275 (Comm’r Pats. 1980); Grand Bag & Paper Co. v. Tidy-House Paper Prods., Inc., 109 USPQ 395 (Comm’r Pats. 1956). However, the USPTO will not enter a correction if the corrected dates are later than the dates that would have been accepted during examination. Therefore, the USPTO will not enter the following corrections:

If the application for the registration was based on use in commerce under 15 U.S.C. §1051(a), the registration cannot be corrected to specify a date of use that is later than the application filing date (see 37 C.F.R. §2.71(c)(1) );
If the application for the registration was based on intent-to-use under 15 U.S.C. §1051(b) in which a statement of use was filed under 15 U.S.C. §1051(d), the registration cannot be corrected to specify a date of use that is later than the statutory deadline for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use) (see 37 C.F.R. §2.71(c)(2) );
If the application for the registration was based on intent-to-use under 15 U.S.C. §1051(b) in which an amendment to allege use was filed under 15 U.S.C. §1051(c), the registration cannot be corrected to specify a date of use that is later than the filing date of the amendment to allege use (see TMEP §903.04); and
The date of first use in commerce may not be earlier than the date of first use anywhere (see TMEP §903.03).

1609.08 Effect of Amendment of Registration on Limitation of Grounds for Cancellation of a Registration

Section 14 of the Trademark Act, 15 U.S.C. §1064, limits the grounds that a third party can raise in a petition to cancel a mark registered on the Principal Register when the petition is filed more than five years after the date of registration.

Ordinarily, the five-year period runs from the date of the registration of the mark for a registration issued on the Principal Register under the Act of 1946, and from the date of publication under §12(c) of the Act for registrations issued under prior Acts and published under §12(c) of the Act of 1946, 15 U.S.C. §1062(c).

However, when a registration has been amended, the five-year period runs from the date of the amendment, to the extent that the amendment of the registration has in any way enlarged the owner’s rights, as though the registration had issued on the date of the amendment. See TBMP §307.02(c)(2).

1609.09 Amendment of Registered Mark from Supplemental to Principal Register Not Permitted

A registration on the Supplemental Register may not be amended to the Principal Register. If the owner of a registration wishes to seek registration on the Principal Register of a mark for which it owns a registration on the Supplemental Register, the owner must file a new application. Under 15 U.S.C. §1062(a), a mark must be published for opposition before it can be registered on the Principal Register.

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).

1609.11 Change of Owner’s Address Can Be Filed Through TEAS

It is not necessary to file a §7 amendment to change the address of the owner of a registration. The TEAS Change Address or Representation form may be used to make such a change.

Note: The owner address will differ from the correspondence address only if a qualified U.S. attorney has been recognized. See TMEP §609.02(e) for information regarding changing the correspondence address after registration.

1609.12 Amendment of Certification Statement for Certification Marks

A registration for a certification mark must include a statement specifying what the owner is certifying about the goods or services in the registration. See 37 C.F.R. §§2.161(a)(9)(iii), 7.37(a)(9)(iii)7.37(j)(3); TMEP §1306.03(a), 1604.21(c), 1613.21(c).

The certification statement must be sufficiently detailed to give proper notice of what is being certified. All of the characteristics or features that the mark certifies should be included. A certification mark registration is not limited to certifying a single characteristic or feature.

Under §7(e) of the Act, the certification statement may be amended if the amendment does not materially alter the certification statement. See 37 C.F.R. §2.173(f).