T.M.E.P. § 1505.02
Procedures for Processing Amendments Filed by the Applicant 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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1505.02 Procedures for Processing Amendments Filed by the Applicant After Publication

1505.02(a) Form and Timing of Amendments

All amendments after publication must be submitted in writing. Unless a notice of opposition has been filed, correspondence that is filed after publication but before issuance of a registration or notice of allowance should be directed to the examining attorney. If republication or issuance of an Office action is not necessary, an application under §1(a), §44, or §66(a) that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board may be amended before the certificate of registration is printed.

If the amendment would require republication or issuance of an Office action, an applicant who wants to amend an application must file a petition to the Director to restore jurisdiction of the application to the examining attorney for consideration of the amendment and further examination. 37 C.F.R. 2.84(b). The petition should be directed to the Office of the Commissioner for Trademarks. See TMEP §1504.04 regarding requests for jurisdiction in §66(a) applications.

See TMEP §§1107 and 1107.01 regarding amendments to a §1(b) application filed between the issuance of a notice of allowance and the submission of a statement of use, and TMEP §1609 regarding amendment of a registration under §7(e) of the Trademark Act, 15 U.S.C. 1057(e).

Any amendment filed during the pendency of a Board inter partes proceeding should be filed with the Board. See 37 C.F.R. 2.133.

1505.02(b) Processing Amendments in Cases Where No Opposition Has Been Filed

Except for amendments to allege use filed in connection with §1(b) applications (see TMEP §1104.04 regarding timely amendments to allege use located after publication, and TMEP §1104.03(c) regarding amendments to allege use filed during the blackout period), Office personnel will route amendments filed after publication to the examining attorney.

If the examining attorney approves the amendment and republication is required, the examining attorney should send the applicant a letter advising the applicant that the amendment will be entered, that the mark will be republished, and that the applicant will receive a notice of the new publication date.

If the examining attorney determines that the amendment cannot be approved, the examining attorney should send the applicant a letter notifying the applicant that the amendment cannot be approved. The examining attorney will explain the reason(s) why the amendment cannot be approved and advise the applicant that the applicant's recourse is to file a petition to the Director requesting that jurisdiction be restored to the examining attorney to consider the merits of the amendment. The examining attorney will then return the application to processing for issue without entry of the amendment.

1505.02(c) Processing Amendments in Cases Where a Request for Extension of Time to Oppose Has Been Filed or Granted

An amendment of an application that is under an extension of time to file an opposition should be processed in accordance with the procedures set forth in TMEP §1505.02(b). The Director retains jurisdiction of such an application until an opposition is actually filed.

It is not necessary for the examining attorney to notify the Trademark Trial and Appeal Board of the action taken on the amendment.

The Board will not suspend the potential opposer's time to file a notice of opposition in this situation. See notice at 68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).

1505.02(d) Processing Amendments in Cases Where an Opposition Has Been Filed

If the applicant files an amendment after a notice of opposition has been filed, the Trademark Trial and Appeal Board will act on the amendment under 37 C.F.R. 2.133. The Board has jurisdiction in any application once an opposition has been filed. See TBMP §§514 et seq. for further information about amendment of an application during an opposition.