T.M.E.P. § 1505.01
Approval of Amendments After Publication

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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1505.01 Approval of Amendments After Publication

1505.01(a) Amendments to the Identification of Goods or Services

If an applicant proposes to amend the identification of goods or services after publication by restricting or deleting items in the existing identification, and the amendment is otherwise proper, the Office will approve the amendment, and the mark will not be republished. See TMEP §1107 regarding amendment of a §1(b) application during the period between issuance of a notice of allowance and filing of a statement of use.

Amendments to an identification to add goods or services or to broaden its scope are not permitted at any time. See 37 C.F.R. 2.71(a); TMEP §§1402.06 and 1402.07 et seq.

1505.01(b) Amendments to Classification

In an application under §1 or §44, if the applicant proposes to amend the classification after publication, and the amendment is consistent with the current version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, the Office will approve the amendment. Republication is not required.

The international classification of goods/services in a §66(a) application cannot be changed from the classification given to the goods/services by the IB. See TMEP §1401.03(d).

1505.01(c) Amendments to Drawings

In an application under §1 or §44, if the applicant proposes to amend the mark after publication, the amendment is not a material alteration of the mark, and the specimen of record or foreign registration (if applicable) supports use of the mark as amended, the Office will approve the amendment and will not republish the mark. If the applicant proposes to amend the mark and the amendment represents a material alteration to the mark, the Office will not approve the amendment. See 37 C.F.R. 2.72; TMEP §§807.13 and 807.14 et seq.

The mark in a §66(a) application cannot be amended. TMEP §807.13(b).

1505.01(d) Amendments to the Dates of Use

If, in an application under §1(a), the applicant proposes to amend the dates of use to adopt a date of use that is after the filing date of the application, the Office will not approve the amendment. See 37 C.F.R. 2.71(c)(1). If, in an application under §1(a), the applicant proposes to amend the dates of use to adopt a date of use that is later than the date originally stated, but before the filing date, the Office will approve the amendment and will republish the mark to provide notice to parties who may have commenced use of a similar mark during the intervening period. If the applicant proposes to amend the dates of use to adopt a date that is before the date originally stated, the Office will approve the amendment and will not republish the mark.

See TMEP §903.05 for more information about amending the dates of use in a pending application, and TMEP §1609.07 regarding amendment of the dates of use after registration.

1505.01(e) Amendments Adding or Deleting Disclaimers

If the applicant proposes to amend the application after publication to insert a disclaimer, and the amendment is otherwise proper, the Office will approve the amendment and will not republish the mark. Likewise, if the Office requests the insertion of a disclaimer after publication and the applicant agrees to the disclaimer, the Office will enter the disclaimer and will not republish the mark.

If the applicant proposes to amend the application to delete a disclaimer after publication and before issuance of the notice of allowance, the applicant must petition the Director to restore jurisdiction of the application to the examining attorney to consider the amendment. If a notice of allowance has issued, however, the examining attorney has jurisdiction to consider the amendment, and a petition to the Director to restore jurisdiction is unnecessary. See 37 C.F.R. 2.84(a). If the examining attorney eventually approves the amendment, the Office will republish the mark. Republication is always required when a disclaimer is deleted after publication (e.g., if printed through a clerical error or originally required by the examining attorney and later determined to be unnecessary). See TMEP §1107 regarding processing an amendment to a §1(b) application filed between the issuance of a notice of allowance and the submission of a statement of use.

1505.01(f) Amendment of the Basis

In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after publication, the applicant must first petition the Director to allow the examining attorney to consider the amendment. If the Director grants the petition, and the examining attorney accepts the added or substituted basis, the mark must be republished. 37 C.F.R. 2.35(b)(2); TMEP §806.03(j). See TMEP §§806.03 et seq. regarding amendment of the basis.

In a §66(a) application, the applicant cannot change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Act, 15 U.S.C. 1141j(c), and 37 C.F.R. 7.31. 37 C.F.R. 2.35(a). See TMEP §1904.09 regarding transformation.

See 37 C.F.R. 2.133(a), TMEP §1505.02(d) , and TBMP §514 regarding the amendment of the basis of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board. No petition is necessary in this situation.

In a multi-basis application, the applicant may delete a basis at any time prior to registration. 37 C.F.R. 2.35(b)(1). See TMEP §806.04(a) regarding the deletion of a §1(b) basis after publication or issuance of the notice of allowance.