TMEP 1609.03: Amendment of Identification

This is the October 2015 Edition of the TMEP

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1609.03    Amendment of Identification

Identification in Registered Extension of Protection

The identification of goods, or services, or the description of the nature the collective membership organization in a registered extension of protection of an international registration to the United States may be amended only in limited circumstances that will affect only the extension of protection to the United States. TMEP §1609.01(a). Specifically, the holder of a registered extension of protection may file a request with the USPTO to amend the registered extension of protection to limit or partially surrender goods/services or limit or fully surrender a collective membership organization. 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. See TMEP §1904.13(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 or broaden the nature of the collective membership organization in an international registration. See TMEP §1906.01(i).

See also TMEP §1904.15 regarding a notification of limitation in the list of goods/services or the nature of the collective membership organization in a registered extension of protection.

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/collective membership organization to restrict the identification or otherwise to change it in ways that would not require republication of the mark. However, goods/services or a collective membership organization may not be added to a registration by amendment. See 37 C.F.R. §2.173(e). Changed circumstances (e.g., new technology) will not render acceptable an amendment that is not otherwise permissible. See In re Capp Enter., 32 USPQ2d 1855 (Comm’r Pats. 1993); In re Fortex Indus., 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.