TMEP 1904.02(j): Mark May Not Be Amended

October 2017 Edition of the TMEP

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1904.02(j)    Mark May Not Be Amended

The Madrid Protocol and the Common Regulations do not permit amendment of a mark in an international registration.  If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application.  The IB’s Guide to International Registration, Para. B.II.72.02, provides as follows:

[T]here is no provision for a mark that is recorded in the International Register to be amended in any way, either on renewal or at any other time.  If the holder wishes to protect the mark in a form which differs, even slightly, from the mark as recorded, he must file a new international application.  This is true even if the mark has been allowed to be changed in the basic application, the registration resulting from the basic application or the basic registration, as the case may be....

Accordingly, because an application under §66(a) is a request to extend protection of the mark in an international registration to the United States, the Trademark Rules of Practice make no provision for amendment of the mark in a §66(a) application, and the USPTO will not permit such amendments. See 37 C.F.R. §2.72; TMEP §807.13(b).  Examples of such impermissible amendments include deletion of a color claim and deletion of entity designations or generic terms from the mark, even if otherwise immaterial. However, the applicant still must comply with U. S. requirements regarding drawings and descriptions of the mark. See TMEP §1904.02(k).

In limited circumstances, an applicant may amend a §66(a) application to add a standard character claim. See TMEP §807.03(g).