TMEP 1609.10(a): Correction of USPTO Error

October 2017 Edition of the TMEP

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1609.10(a)    Correction of USPTO Error

Registered Extension of Protection

If USPTO records show that a clerical error occurred through the fault of the USPTO, the USPTO will correct the error without charge.  See TMEP §1904.14 regarding a notification of correction in the international register with respect to a registered extension of protection.

Registration Based on Application under §1 or §44

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 individual owner of the registration, someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner of a partnership), or the owner’s qualified practitioner, and directed to the Post Registration Section.

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 such that republication is required (e.g.,a material change of the mark because the wrong mark published or a broadening of the identification of goods/services because goods/services were deleted in error), the USPTO will not issue a certificate of correction under §7(g).  Section 12(a) of the Trademark Act, 15 U.S.C. §1062(a), requires examination and publication prior to registration.  Therefore, the error can be corrected only by canceling the registration as inadvertently issued and republishing the mark with the correct information.  Depending on the circumstances, the USPTO may give the owner the option of either: (1) keeping the registration as issued; or (2) having the registration cancelled as inadvertently issued and republishing the mark.  If the mark is 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 the application will be 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. If the amendment is not acceptable, the examining attorney will issue a non-final Office action with a six-month response clause.

A request to have a registration cancelled as inadvertently issued should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy.