TMEP 1505.02(e): Amendments Adding or Deleting Disclaimers

This is the October 2015 Edition of the TMEP

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1505.02(e)    Amendments Adding or Deleting Disclaimers

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

If an applicant proposes to amend the application to delete a disclaimer after publication and before issuance of the notice of allowance or registration certificate, and the USPTO determines that the amendment is acceptable, the USPTO will approve the amendment in accordance with the procedures in TMEP §1505.01(c)(i), and will republish the mark. If the amendment deleting the disclaimer is unacceptable, the USPTO will follow the procedures in TMEP §1505.01(c)(ii). The applicant may then resubmit the amendment with the statement of use, or petition the Director to restore jurisdiction of the application to the examining attorney to consider the amendment. See 37 C.F.R. §2.84(a). If the examining attorney eventually approves the amendment, the USPTO will republish the mark.

Republication is generally 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).

Exception: If the applicant proposes to amend the mark after publication to delete matter that was the subject of a disclaimer (e.g., generic wording), the USPTO determines that the amendment is not a material alteration of the mark, and the applicant also requests that the disclaimer be deleted, the USPTO will approve the amendment and will not republish the mark.