TMEP 1505.03(a): When Republication Is Required

This is the October 2015 Edition of the TMEP

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1505.03(a)    When Republication Is Required

Republication is required after entry of any acceptable post-publication amendment that expands the applicant’s rights or would otherwise require notice to third parties. The following list, though not exhaustive, provides examples of amendments that would require republication of the mark:

  • Amendment adds or substitutes a basis (see 37 C.F.R. §2.35(b)(2));
  • Unnecessary §2(f) claim is deleted;
  • Unnecessary disclaimer is deleted;
  • A product, service, or class was deleted by USPTO error and is reinserted into the application;
  • A product, service, or class was deleted due to partial abandonment ( see TMEP §718.02(a) ) and is reinserted upon granting of petition to revive;
  • Identification is amended to an identification that is narrower in scope than the published identification, but results in a material difference in the nature of the goods/services/collective membership organization (e.g., the mark published for “shoes” in Class 25 and the applicant then amends to “orthopedic shoes” in Class 10);
  • An incorrect mark was published due to USPTO error;
  • The effective filing date ( see TMEP §§206 et seq.) changes to a later date;
  • The priority filing date under §44(d) (see TMEP §1003 ) is corrected to a later date;
  • In a §1(a) application, either the date(s) of first use or the date(s) of first use in commerce is amended to a date(s) that is later than the date(s) stated (but earlier than the filing date of the application);
  • In a §1(b) application for which an amendment to allege use has been filed, either the date(s) of first use or the date(s) of first use in commerce is amended to a date(s) that is later than the date(s) stated (but earlier than the filing date of the amendment to allege use);
  • Application is amended to the Principal Register from the Supplemental Register;
  • Application is amended from a trademark or service mark to certification mark or vice versa;
  • An application with a §44(e) basis is amended to rely on a different foreign registration after publication.