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.  Regs. Rule 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.  Regs. Rule

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 USPTO policy and

procedures

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 USPTO 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(3) of the Regulations.  The examining

attorney must contact the MPU upon issuance of such an action so that it will be

forwarded as required

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(3) of the 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

§1906.01(f)

for information about filing a request for

correction with the IB.