Chapter 10
	POST-PUBLICATION ACTIONS AND AMENDMENTS

§10.01	Actions After Publication
[A]	In General
[B]	Trademark Trial and Appeal Board Has Jurisdiction
[C]	Commissioner Has Jurisdiction
§10.02	Amendments After Publication
[A]	Permitted Post-Publication Amendments
[B]	Form and Timing of Amendments
§ 10.03	Amendments After Notice of Allowance
[A]	Dividing an Application
[B]	Deleting Goods/Services (or Entire Class) with a Section 1(b), Intent to Use, Basis
[C]	Deleting the Section 1(b), Intent to Use, Filing Basis
[D]	Changing Filing Basis After the NOA Issues
[E]	Changing Your Mark or Filing Amendments Other Than to Delete Goods/Services After the NOA Issues
Form 10A	Amendment After Publication
Form 10B	Letter to Client Regarding Allowance of Amendment After Publication
Form 10C	Letter to Client Regarding Rejection of Amendment After Publication
Clause 10-1	Certificate of Mailing
Clause 10-2	Certificate of Transmission

§ 10.01	ACTIONS AFTER PUBLICATION
[A]	In General
A post-publication quality review or other circumstances may require that the application be refused or a requirement be made after publication of the mark in the Official Gazette. However, jurisdiction resides either with the Commissioner or with the TTAB after publication. The examining attorney may not make a refusal or a requirement, other than for minor matters, unless jurisdiction is returned to the examining attorney.
Restoration of jurisdiction to the examining attorney is only possible for applications for the Principal Register since a mark on the Supplemental Register is only published upon issuance. For intent to use applications, where an Amendment to Allege Use has not been filed, jurisdiction automatically vests in the examining attorney after issuance of the Notice of Allowance eliminating the need to request jurisdiction.
If it is a minor matter which can be handled by telephone or by examiner’s amendment and the application is not the subject of inter partes proceeding before the TTAB, the examining attorney will do so without restoration of jurisdiction over the application. However, if written action is required, even if merely asking for additional information, jurisdiction must be restored before the action can be made.
[B]	Trademark Trial and Appeal Board Has Jurisdiction
The Trademark Trial and Appeal Board (“TTAB”) has jurisdiction over an application during an appeal or after a notice of opposition has been filed. The Board may, in response to an examining attorney’s request or on its own initiative, suspend an appeal and remand the case to the examining attorney for consideration of specific facts. In such situations, the examining attorney may address only those issues delineated by the TTAB unless the examining attorney requests and is granted an expanded remand. Typical situations where the TTAB remands to the examining attorney are when:
(1)	the applicant’s attorney or the examining attorney seeks to include in the record previously unavailable evidence (for example, a recent article, newly issued registration, or recent decision); 
(2)	a new attorney for the applicant, or a new examining attorney, wishes to supplement the record made by his predecessor; 
(3)	the applicant and the examining attorney agree to a remand; or 
(4)	an Amendment to Allege Use is submitted for consideration. 
The TTAB approves or disapproves of any amendments which are proposed during an opposition proceeding.
[C]	Commissioner Has Jurisdiction
In all other post-publication pre-issuance situations, jurisdiction resides either with the Commissioner or the examining attorney. Normally, jurisdiction will be restored to the examining attorney from the Commissioner by petition, and only if there has been clear error.
§10.02    AMENDMENTS AFTER PUBLICATION
[A]    Permitted Post-Publication Amendments
On occasion, an applicant may wish to submit an amendment after publication to change the application in some respect, such as the mark, the goods or services, classification of goods or services, or the date of first use.12 Such amendments must be approved by the Commissioner or the TTAB, depending on who has jurisdiction.13
      To improve the tracking and disposition of amendments and requests for corrections to trademark applications submitted after publication, the Office recommends that once an application has been “approved for publication” by the examining attorney, all amendments and requests for corrections are processed as amendments/corrections after publication. Applicants are strongly encouraged to review the information concerning their application in the TARR database and as published in the Official Gazette at http://www.uspto.gov/web/trademarks/tmog/. The Official Gazette can be searched at: http://tmsearch.uspto.gov/. Upon review of the information concerning your application, any requests for an amendment/correction should be faxed to post-publication amendments/corrections at 571-270-9007 to ensure that they become part of the record for the relevant application. Requests to correct minor typographical errors entered by the USPTO, inquiries regarding the procedure for submitting a post-publication amendment, or questions regarding the status of a post-publication amendment can be e-mailed to TM Post Pub Query@uspto.gov.
      All post-publication amendments/corrections should be submitted no later than six weeks from the publication date to ensure that the amendment/correction can be considered prior to the issuance of the notice of allowance or registration certificate.
       In an intent to use application where an Amendment to Allege Use has not been filed, amendments filed between the issuance of the Notice of Allowance and the filing of the Statement of Use are prohibited, except to delete specified goods or services, deleting a basis in a multiple basis application, notices of change of attorney, and notices of change of address.14 If any other amendment is submitted, the proposed amendment is placed in the application file for consideration at the time of examination of the Statement of Use.15 If the applicant requires an immediate review of the proposed amendment, it may petition the Commissioner for a review by the examining attorney for acceptance or rejection of a proposed amendment.16
      When an applicant wishes to amend the identification of goods or services after publication by restricting or deleting items from an existing identification, and the amendment is otherwise proper, the Office will approve the amendment, and the mark will not be republished.17 Amendments to an identification to add goods, or services, or to broaden the scope are not permitted at any point in the prosecution of an application.18
      If an applicant proposes to amend the classification of goods or services after publication, and the amendment is otherwise proper, the Office will approve the amendment and will republish the mark to ensure notice to the public.19
      If an applicant proposes to amend a mark as shown in the drawing after publication, the Office will approve the amendment and will not require republication if the amendment is not a material alteration of the mark,20 and the specimens of record support use of the mark as amended.21 If the applicant’s proposed amendment to the mark represents a material alteration of the mark, the Office will not approve the amendment.22 In such situation, applicant’s only recourse is to petition the Commissioner for review of the examining attorney’s determination of material alteration.23
If, in an application based on use in commerce, the applicant proposes to amend the dates of use to a date which is after the filing date of the application or Amendment to Allege Use, the Office will not approve the amendment.24 If the applicant in a use based application proposes to amend the dates of use to dates later than the date originally stated, but before the filing date, the Office will approve the amendment and will republish the mark to provide notice to parties who may have commenced use of a similar mark during the intervening period. If the application was based on intent to use and the dates in the Amendment to Allege Use were incorrect, applicant must petition the Commissioner to restore jurisdiction to the examining attorney in order for applicant to withdraw the Amendment to Allege Use and to republish the mark.25 finally, if the applicant proposes to amend the dates of use to a date which is before the date originally stated, then the Office will approve the amendment and will not republish the mark.26
Amendments after publication to assert a second basis for registration or to substitute one basis for another require petition to the Commissioner to restore the application to the examining attorney.27 Republication will be required.
In a multiple-basis application, the applicant may file a request to divide out goods or services having a particular basis during the period between the issuance of the Notice of Allowance and the filing of an Statement of Use.
If the applicant proposes to amend the application to insert a disclaimer after publication, and the amendment is otherwise proper, the Office will approve the amendment and will not republish the mark.28 If the applicant proposes to amend the application to delete a disclaimer after publication but before the issuance or Notice of Allowance date, the applicant must petition the Commissioner to restore the application to the examining attorney’s jurisdiction to consider the amendment on the merits.29 After the filing of a Statement of Use in an intent to use application, however, the examining attorney may consider such an amendment without petition to the Commissioner.30 If the examining attorney eventually approves the amendment, the Office will republish the mark.31
[B]	Form and Timing of Amendments
All proposed amendments after publication must be in writing. Correspondence that are filed after publication, but before issuance of registration or Notice of Allowance, should be sent to the attention of the Trademark Quality Review Clerk of Trademark Program Control. If republication or issuance of Office action is not required, and the application is not in the jurisdiction of the TTAB, an application based on use in commerce or foreign registration may be amended up until the time of printing of the certificate of registration. Otherwise, an amendment to such an application may be made only upon petition to the Commissioner to restore jurisdiction of the application to the examining attorney for consideration of the amendment and further examination.32 Accordingly, applicant should file such an amendment before expiration of the opposition period or before expiration of any extensions of time for filing an opposition. The examining attorney will give priority to the processing of any amendment after publication.33
In an intent to use application, the examining attorney has jurisdiction to review any amendment contained in the Statement of Use. An intent to use application may be amended up until the time of issuance of the Notice of Allowance and after the filing of a Statement of Use and before the printing of the certificate of registration. If the amendment is included in Request for an Extension of Time to file Statement of Use, the amendment will be retained in the applicant’s file for review once a Statement of Use is submitted, or immediately, upon petition to the Commissioner.34
Whenever an amendment after publication is not approved, the examining attorney will promptly telephone the applicant and advise the applicant that its only recourse is to file a petition to the Commissioner to request that jurisdiction be restored to the examining attorney to consider the merits of the amendment.35
§ 10.03	AMENDMENTS AFTER NOTICE OF ALLOWANCE
There are a number of amendments to an application that occur after a Notice of Allowance (“NOA”) has been issued.
[A]	Dividing an Application
After the NOA is issued, you may file a request to divide the application if you want some of the goods/services to remain based on Section 1(b), intent to use (“ITU”), and other goods/services are ready to move forward to registration. The goods/services moving forward to registration are always placed in the newly created child application. The ITU goods/services remain in the original application, called the parent application. There is a $100 fee for each newly created application when dividing an application, and if you are dividing within a class, you also must pay the application filing fee. Instead of filing a request to divide, you may delete those goods/services that you are not using or no longer have a bona fide intention to use.
The following is information about the most common scenarios for filing a request to divide after the NOA has been issued.
Scenario 1: Application is based on Section 1(b), ITU, and you want to file a statement of use for only some of the goods/services in the application. Use the TEAS Statement of Use form at http://www.uspto.gov/teas/eTEASpageB2.htm and check the radio button for filing a request to divide as part of this allegation of use. Carefully review all instructions so that you correctly identify the goods/services/classes for which you are filing the statement of use. You will also need to file a request for extension of time to file a statement of use for the goods/services/class(es) that are based on intent to use, if due. You can file the extension request first if you would like it to cover all of the goods/services in the application.
Scenario 2: Application is mixed-basis; some goods/services are based on Section 1(b), ITU, and other goods/services are based on Section 1(a), use in commerce and/or Section 44(e), a foreign registration. After the NOA issues, you can request to divide the goods/services/class(es) that are already based on either Section 1(a), use in commerce, or Section 44(e), a foreign registration, so they can move forward to registration. To do this you would need to use the Request-to-Divide application form available on the website at http://www.uspto.gov/teas/eTEASpageF.htm. A child application will be created for the Section 1(a) and/or Section 44(e) goods/services/class(es). The Section 1(b), ITU, goods/services/class(es) will remain in the parent application and you will need to file an extension request or statement of use during the statutory filing period at http://www.uspto.gov/teas/eTEASpageB2.htm.
[B]	Deleting Goods/Services (or Entire Class) with a Section 1(b), Intent to Use, Basis
Scenario 1: Applicant no longer intends to file a statement of use for some of the goods/services in the application. After the NOA issues, you may delete goods/services/class(es) from the application by filing a post-publication amendment. To do this you would need to use the Post-Publication Amendment form available on the website at http://teasroa.uspto.gov/ppa/. In the “Explanation of Filing” box that comes up when you use this form, clearly state the goods/services/class(es) to be deleted.
Scenario 2: The application is a mixed-basis application and applicant wants to delete the Section 1(b) goods/services from the application and have the other goods/services based on Section 1(a), use in commerce and/or Section 44(e), a foreign registration proceed to registration. After the NOA issues, you may delete the ITU goods/services from the application, using the Post-Publication Amendment form available on the website at http://teasroa.uspto.gov/ppa/. In the “Explanation of Filing” box that comes up when you use this form, clearly state that the ITU goods/services are being deleted and that the application should proceed to registration for the goods/services in the application that are already based on Section 1(a) or Section 44(e).
[C]	Deleting the Section 1(b), Intent to Use, Filing Basis
After the NOA issues, you can delete the Section1(b), ITU-filing basis, in an application where all of the goods/services in the application have a dual basis. For example, if the goods/services are based on intent to use and a foreign registration, you may request that the ITU-basis be deleted so that the application can move to registration, based on the foreign registration. To delete the Section 1(b) basis in a dual-basis application, use the request-to-delete Section 1(b) basis, Intent-to-Use form available on the website at http://teas.uspto.gov/dob/. If you want to delete the ITU goods/services from the application and have other goods/sevices based on use or a foreign registration that you want to go to registration, you are not deleting a basis. You must use the Post-Publication Amendment form to delete the ITU goods/services. See Scenario 2, above.
[D]	Changing Filing Basis After the NOA Issues
You can request to substitute the Section 1(b), ITU basis, for Section 44(e), a foreign registration after publication, only by filing a petition to the director. Use the petition-to-amend basis Post-Publication form available on the website at http://www.uspto.gov/teas/eTEASpageG.htm. You must be amending the basis for all of the goods/services in the application otherwise, you must first file a request to divide the application, at http://www.uspto.gov/teas/eTEASpageF.htm. There is a $100 petition fee required. If the change in basis is accepted, republication is required. For more information, see T.M.E.P. § 806.03(j).
[E]	Changing Your Mark or Filing Amendments Other Than to Delete Goods/Services After the NOA Issues
After the NOA issues, a petition to the director is required to allow the examining attorney to consider an amendment other than an amendment to delete goods or services from the application, unless the amendment is submitted with or after the statement of use. Use the Petition-to-Director form at http://www.uspto.gov/teas/eTEASpageG.htm. Please note that an amendment to the mark will not be allowed if it is considered a material alteration of the mark.
•	Form 7K is a form to be used for submitting amendments to an application after the application is filed but prior to publication. 
•	Form 10A is a form to amend an application after publication but prior to issuance or NOA. 
•	Form 10B is a letter to client notifying of allowance of amendment. 
•	Form 10C is a letter to client notifying of rejection of amendment. 

FORM 10A
AMENDMENT AFTER PUBLICATION
In re Application of	:	
APPLICANT		:	__[1]
MARK			:	__[2]
SER. NO.		:	__[3]
FILING DATE		:	__[4]

Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
AMENDMENT AFTER PUBLICATION
Please amend the above-referenced application as follows:
__[5]
Respectfully submitted,
__[6]
Our Ref.: __[7]
__[8]

[1]	Applicant name as it appears in the written application.
[2]	Mark as it appears in the written application.
[3]	Serial number.
[4]	Original filing date appearing on original postcard or the date on the Express Mail receipt.
[5]	Insert amendment information. The clauses in Chapters 4, 8, and 9 may be of use.
[6]	Name of person submitting response on behalf of applicant.
[7]	In-house application reference.
[8]	If a Certificate of Mailing is to be used, insert Clause 10-1, if a Certificate of Transmission is to be used, insert Clause 10-2, if Express Mail is to be used, insert “Express Mail Label Number:” and the Express Mail label number.

FORM 10B
LETTER TO CLIENT REGARDING ALLOWANCE OF AMENDMENT AFTER PUBLICATION
___[1]
Re:	In re Application of		:
Applicant		:	___[2]
Mark			:	___[3]
Ser. No.		:	___[4]
Filing Date		:	___[5]
Dear ___[6]:
We are happy to inform you that the Office has reviewed our request to amend the application and granted the request. Accompanying this letter is a copy of a correspondence from the Office confirming the amendment. Accordingly, ___[7].
We will keep you informed as to any further activity on the application.
Very truly yours,

[1]	Client’s name and address.
[2]	Applicant name as it appears in the written application.
[3]	Mark as it appears in the written application.
[4]	Serial number.
[5]	Original filing date appearing on the filing receipt.
[6]	Name of in-house counsel or other client’s representative.
[7]	Next action to be taken by the Office.

FORM 10C

LETTER TO CLIENT REGARDING REJECTION
OF AMENDMENT AFTER PUBLICATION

___[1]

Re:	In re Application of	:		
	Applicant				   	:	___[2]	
	Mark						   	:	___[3]	
	Ser. No.					  	:	___[4]	
	Filing Date				 	:	___[5]	

Dear ___[6]:

We have received the enclosed correspondence from the Office concerning our request to amend the application. The Trademark Examining Review Clerk has reviewed our amendment request and has determined that ___[7]. Accordingly, the proposed amendment to the application has been refused.  

The only response to this rejection is to file a petition to the Commissioner to request that jurisdiction be restored to the examining attorney to consider the merits of the amendment. This must be done no later than ___[8] or the resulting registration will issue unamended. Accordingly, we request that you respond to this letter with your comments and instructions at your earliest convenience in order to permit a petition to be prepared in a careful and considered fashion well before the due date. 

Very truly yours,

[1]	Client’s name and address.
[2]	Applicant name as it appears in the written application.
[3]	Mark as it appears in the written application.
[4]	Serial number.
[5]	Original filing date appearing on the Filing Receipt.
[6]	Name of in-house counsel or other client’s representative.
[7]	Reason given to not allow the amendment.
[8]	Date six months from the date appearing on the Office correspondence.

CLAUSE 10-1 CERTIFICATE OF MAILING 

	I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to: Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, on ___[1].

Dated: ___[2]						By: _______________________
														  							  ___[3]

[1]	The date the correspondence is mailed.
[2]	The date the correspondence is mailed.
[3]	The person mailing the correspondence.

CLAUSE 10-2 CERTIFICATE OF TRANSMISSION 

	I hereby certify that this correspondence, including the materials listed above, are being facsimile transmitted to the Patent and Trademark Office fax number ___[1] on ___[2].

Dated: ___[3]						By: _______________________
																							   ___[4]

[1]	Telecopier number of recipient facsimile machine.
[2]	The date the correspondence is mailed.
[3]	The date the correspondence is mailed.
[4]	The person mailing the correspondence.