TMEP 1609.01(a): Limited Amendments to Registered Extension of Protection

This is the October 2015 Edition of the TMEP

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1609.01(a)    Limited Amendments to Registered Extension of Protection

An extension of protection of an international registration remains part of (and dependent on) the international registration even after registration in the United States. 15 U.S.C. §1141j; 37 C.F.R. §7.30; TMEP §§1601.01(c), 1904.08. All requests to record changes to an international registration must be filed at the IB.

Accordingly, the holder of a registered extension of protection may file a request for amendment under §7 of the Trademark Act with the USPTO only in limited circumstances, where the change will affect only the extension of protection to the United States. For example, a holder may request to amend the registered extension of protection to add a voluntary disclaimer, to amend the translation of the mark that was provided during examination in the USPTO, or to limit or partially surrender goods/services/classes. If the USPTO grants the §7 request, the USPTO will notify the IB of the change to the extension of protection to the United States.

The USPTO will not accept an amendment of a registered extension of protection involving the holder’s name or address that has not been recorded with the IB. 37 C.F.R. §7.22; TMEP §1906.01(c).

The mark in a registered extension of protection cannot be amended. See TMEP §§1609.02, 1906.01(i).

See TMEP §§1904.13 et seq. regarding amendment and correction of registered extensions of protection, and 1906.01 et seq. regarding requests to record changes at the IB.