TMEP 807.13(b): Mark in §66(a) Application Cannot be Amended

This is the October 2015 Edition of the TMEP

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807.13(b)    Mark in §66(a) Application Cannot be Amended

The Madrid Protocol and the Common Regs. do not permit amendment of the 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) of the Trademark Act is part of the international registration, 37 C.F.R. §2.72 makes no provision for amendment of the mark in a §66(a) application, and the USPTO will not permit any such amendments. TMEP §1904.02(j). See 68 Fed. Reg. 55748, 55756 (Sept. 26, 2003).

Exception: Non-material informational matter that appears on the international registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.

However, the applicant must comply with United States requirements regarding drawings and descriptions of the mark. TMEP §1904.02(k).

Similarly, after registration, a registrant generally cannot amend under §7 of the Trademark Act a mark in a registered extension of protection, except to add a standard character claim if the registered mark complies with the requirements of 37 C.F.R. §2.52(a)(1)–(5). TMEP §1609.02. See TMEP §1609.01(a) regarding additional, limited amendments permitted in a registered extension of protection.

See TMEP §§1904.03(f) and 1904.14 regarding notifications of corrections in the International Register with respect to pending §66(a) applications and registered extensions of protection.