T.M.E.P. § 1609.03
Amendment of Identification of Goods or Services

Executive summary:

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1609.03 Amendment of Identification of Goods or Services

Identification of Goods/Services in Registered Extension of Protection Cannot be Amended Under §7

The identification of goods/services in a registered extension of protection of an international registration to the United States cannot be amended under §7 of the Trademark Act. TMEP §1609.01(a). All requests to record changes to an international registration must be filed at the IB. See TMEP §§1906.01 et seq. regarding requests to record changes at the IB. Note that the IB does not permit amendments that expand the list of goods/services in an international registration. See TMEP §1906.01(i).

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 to restrict the identification or otherwise to change it in ways that would not require republication of the mark. However, goods/services may not be added to a registration by amendment. See 37 C.F.R. 2.173(b). Changed circumstances (e.g., new technology) will not render acceptable an amendment that is not otherwise permissible. See In re Capp Enterprises, Inc., 32 USPQ2d 1855 (Comm'r Pats. 1993); In re Fortex Industries Inc., 18 USPQ2d 1224 (Comm'r Pats. 1990); In re Carter Hawley Hale Stores, Inc., 200 USPQ 179 (Comm'r Pats. 1978). For example, if the goods in the registration are identified as "phonograph records," the identification of goods cannot be amended to "compact discs."

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. See 37 C.F.R. 2.172. See TMEP §1608 regarding surrender.