TMEP 1904.14: Notification of Correction in the International Register with Respect to Registered Extension of Protection

This is the October 2015 Edition of the TMEP

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1904.14    Notification of Correction in the International Register with Respect to Registered Extension of Protection

When the IB determines that there is an error concerning an international registration in the International Register, it corrects that error ex officio. The IB will also correct errors at the request of the holder or the Office of Origin. Common Reg. 28(1). See TMEP §1906.01(f). If the IB notifies the USPTO of a correction of an international registration, the USPTO may declare in a notification to the IB that protection cannot, or can no longer, be granted to the international registration as corrected. This may be done where there are grounds for refusal of the international registration as corrected which did not apply to the international registration as originally notified to the USPTO. Common Reg. 28(3).

Upon receipt of a notification of correction in a registered extension of protection, the MPU shall determine whether the correction would require republication of the mark. If republication would not be required, the MPU will enter the correction in the Trademark database and ensure that a certificate of correction is issued to the holder.

When a notification of correction received from the IB prior to registration is not acted upon in sufficient time or is received too late to withdraw the application from issuance of a registration, the resulting registration generally will be treated as inadvertently issued. However, to the extent possible given the nature of the correction, the holder will be given the opportunity to keep the registration as issued and the USPTO will create a child application for any corrected goods/services/classes. The USPTO will notify the holder via the last correspondence address of record as to the receipt of the correction and the options for processing. To the extent a correction involves issues that cannot be handled by the creation of a child application, such as a material alteration of the mark, the registration will be cancelled as inadvertently issued and examined in accordance with Office policy and procedures.

When a notification of correction is received after the USPTO has issued a registered extension of protection, the correction will be reviewed in the MPU to determine if the registration may be corrected, as no republication would be required to implement the correction. When the correction would not trigger a requirement for republication, the MPU will make the correction and schedule the issuance of an updated registration certificate, as necessary.

If the MPU determines that entry of the correction would require further examination, the holder will be given the opportunity to keep the registration as issued and to divide any corrected goods, services, and/or classes affected into a child application pursuant to 37 C.F.R. §2.87. See TMEP §§1110–1110.12. The holder may also request the entire file be restored to pendency and the application will be re-examined as corrected.

Upon receipt of a correction that would affect the rights deriving from the international registration, the USPTO is afforded a new period of 18 months within which to notify the IB of any newly arising grounds for refusal. To the extent any requirements or refusals are applicable to the corrected data, the examining attorney shall issue an Office action, which will be forwarded by the MPU to the IB, as required by Section 68(c)(1), 15 U.S.C. §1141h(c)(1), and Rule 28(e) of the Common Regulations. The examining attorney must contact the MPU upon issuance of such an action so that it will be forwarded as required.

See also TMEP §1904.03(f) regarding corrections to pending §66(a) applications, and TMEP §1906.01(f) for information about filing a request for correction with the IB.