TMEP 1904.15: Notification of Limitation of the List of Goods/Services with Respect to Registered Extension of Protection

This is the October 2015 Edition of the TMEP

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1904.15    Notification of Limitation of the List of Goods/Services with Respect to Registered Extension of Protection

Limitation Due to Partial Cancellation of International Registration

When the USPTO receives notification from the IB that the international registration has been cancelled in part due to the ceasing of effect of the basic registration, the USPTO will partially cancel the registered extension of protection by updating the USPTO’s Trademark database and issuing an updated registration certificate. 15 U.S.C. §1141j(a); 37 C.F.R. §7.30 The MPU will determine what, if any, goods and/or services remain extended to the United States and narrow the listing of goods and/or services accordingly.

Voluntary Limitation by Holder of International Registration

Upon receipt of notification from the IB that a voluntary limitation of the list of goods/services affects the United States, the USPTO may declare that the limitation has no effect. Such a declaration must be sent to the IB within 18 months of notification of the limitation. The USPTO will indicate the reasons for which the limitation has no effect, the corresponding essential provisions of the law, and whether the declaration is subject to review or appeal. Common Regs. 27(5)(a)-(c).

If the MPU trademark specialist determines that the limitation has no effect in the United States (e.g., because he or she determines that the change requested results in an extension rather than a limitation of the goods/services), the MPU will forward the case to the Post Registration division to issue a post-registration Office action refusing the limitation as an unacceptable amendment of the registered extension of protection under Section 7. 15 U.S.C. §1057. See TMEP §1609.03 regarding amendment of the identification of goods or services in a registered extension of protection. Once issued, the MPU will forward a copy of the Office action declaring the limitation to have no effect to the IB within 18 months of the date of the IB’s notification of the limitation.

If the MPU trademark specialist determines that the limitation does have effect in the United States, the MPU trademark specialist will enter the limitation into the Trademark database and ensure that an updated registration certificate is issued to the holder.

If a limitation results in the deletion of all goods/services identified in the registered extension of protection, the registration will be cancelled.

See also TMEP §1904.03(g) regarding limitations of the goods/services in pending §66(a) applications, and TMEP §1906.01(e) for information about filing a request to record a limitation with the IB.