TMEP 1609.10(b): Correction of Owner’s Error

October 2017 Edition of the TMEP

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1609.10(b)    Correction of Owner’s Error

Registered Extension of Protection

Generally, all requests to record changes to an international registration must be filed at the IB, because an extension of protection of an international registration remains part of the international registration even after registration in the United States.  However, in the limited circumstance where the holder of an international registration makes a mistake in a document filed during prosecution in the USPTO that affects only the extension of protection to the United States, the registrant may request correction of the error pursuant to 37 C.F.R. §2.175. See TMEP §1904.13(b).

See TMEP §§1906 and 1906.01 et seq. regarding requests to record changes at the IB, and 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

Under §7(h) of the Trademark Act, 15 U.S.C. §1057(h), if a mistake in a registration occurs in good faith through the fault of the owner of the registration, the Director may correct the error upon written request and payment of the fee required by 37 C.F.R. §2.6, provided the correction does not result in a change that would require republication of the mark.

The owner of the registration must file a written request specifying the error, explaining how the error occurred, and showing that it occurred in good faith. 37 C.F.R. §2.175(b)(1). The request must be signed and verified or supported by a declaration under 37 C.F.R §2.20 by the individual owner, someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §§2.175(b)(2), 2.193(e)(6).  In the case of joint owners who are not represented by a qualified practitioner, all must sign. 37 C.F.R. §2.193(e)(6).  The request for correction should be directed to the Post Registration Section.  See TMEP §§611.06 et seq. for guidelines on persons with legal authority to bind various types of juristic entities, and TMEP §§602 et seq. regarding persons who are qualified to represent others before the USPTO in trademark cases.

As noted above, the owner of a registration cannot correct a mistake if the changes would require republication of the mark. 15 U.S.C. §1057(h); 37 C.F.R. §2.175(a).  Thus, a correction cannot be made if it would materially alter the mark, or broaden the identification of goods/services.  See TMEP §§807.14 and 1609.02(a) regarding material alteration, and TMEP §1609.03 regarding changes to the identification of goods/services.

A registration can be corrected to cure an inadvertent error in the manner in which the owner’s name is set forth.  However, the registration cannot be corrected to substitute another entity as the owner.  See TMEP §1201.02(c) for examples of correctable and non-correctable errors in identifying the owner of an application or registration.

Section 7(h) gives the Director the discretion to issue either a certificate of correction of the existing registration or a new certificate of registration. See In re Pamex Foods, Inc., 209 USPQ 275, 277-78 (Comm’r Pats. 1980).  In either case, if the mistake was made by the owner of the registration, a fee is required. See15 U.S.C. §1057(h); 37 C.F.R. §§2.6, 2.175(b)(3).