T.M.E.P. § 1609.10
Correction of Mistake in Registration
Executive summary:
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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. 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.
Requests for correction of registrations are handled by the Post Registration Section.
If the request for correction is granted, the USPTO sends an updated registration certificate to the owner of record, and updates USPTO records to show the correction.
1609.10(a) Correction of Office Error
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 should submit a written request, specifying the error to be corrected. This request should be signed by the owner of the registration or the owner's attorney, and directed to the Post Registration Section of the Office.
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 (e.g., a material change of the mark or a broadening of the identification of goods/services), the USPTO will not issue a certificate of correction under §7(g). Section 12(a) of the Trademark Act requires examination and publication prior to registration. Therefore, if the error results in a material change to the registration, the error can be corrected only by cancelling the registration as inadvertently issued and republishing it with the correct information. The USPTO will give the owner the option of either (1) keeping the registration as issued, or (2) having the registration cancelled as inadvertently issued and republished. If the owner chooses to have the mark 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, the registration will be cancelled as inadvertently issued and 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.
A request to have a registration cancelled as inadvertently issued should be directed to the Office of the Commissioner for Trademarks.
1609.10(b) Correction of Registrant's Error
Error in Registered Extension of Protection Must be Corrected at International Bureau
An extension of protection of an international registration remains part of the international registration even after registration in the United States. TMEP §1601.01(c). 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.
Registration Based on Application under §1 or §44
Under §7(h) of the Trademark Act, 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 written request specifying the error, explaining how the error occurred, and showing that it occurred in good faith. The request must be verified by the owner or a person who is properly authorized to sign on behalf of the owner. 37 C.F.R. 2.175(b). A "person properly authorized to sign on behalf of the owner" is: (1) a person with legal authority to bind the owner; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or (3) an attorney as defined in 37 C.F.R. 10.1(c) who has an actual written or verbal power of attorney or an implied power of attorney from the owner. The request for correction should be directed to the Post Registration Section of the Office.
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 TMEP §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. 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 or registration.
Section 7(h) gives the Director the discretion to issue a certificate of correction of the existing registration or to issue 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 and 2.175(b).