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Tag: trademark application

Changing the Applicant Name in a Trademark Application

In the past year, I have dealt with one issue more times than I have in the previous ten years of practice: correcting or changing the applicant name in a trademark application.  Apparently trademark applicants are mis-identifying themselves more frequently in trademark applications than they used to.

Changing or correcting a trademark applicant’s name is not always a straightforward or safe thing.  The reason for the correction dictates whether it can be made at all.  Some changes are simple, some are complicated, and some will potentially invalidate the trademark application.

Different Types of Changes

A change of the trademark applicant name may need to be made if any of the following have occurred:

  • Owner changed its name without a transfer of assets
  • Transfer of ownership of the trademark
  • The owner was identified incorrectly in the original trademark application filing

Trademark Filing Basis Can Limit the Change

The law limits the extent to which a trademark applicant can change an owner’s name on an intent-to-use trademark application.  You generally cannot assign an intent-to-use trademark application to a third-party.

Any name changes of intent-to-use applications must reflect only changes of ownership to a business successor for the goods and services connected to the trademark.  Otherwise, you must wait until the trademark application’s filing basis changes to “in-use,” such as after filing an Amendment to Allege Use or a Statement of Use.

Entity Name Change

Sometimes, a company changes its name without merging or selling.  When the company simply undergoes a name change, then updating the applicant name in the trademark application is fairly easy.  Go to the Electronic Trademark Assignment System (ETAS) and then select “Change of Name”:

Change of name form for a trademark application

ETAS Change of Name Form for a Trademark Application

You may also need to change the entity name if the owner was a person and changed his or her last name.  For instance, if the owner got married and adopted a new last name, she could change her name in this way.

Transfer of Ownership

If the trademark has changed hands, then you should record a transfer of ownership or a trademark assignment.  Typically, this will happen when one company buys a product line or another company.

The Trademark Office requires submission of the document effecting the transfer of ownership.  This document will become public record.  For this reason, big agreements sometimes include a separate trademark assignment as an exhibit to the agreement.  This allows the attorneys to file only the exhibit without revealing all the details of the big agreement.

Correcting a Mis-Identified Applicant

When a trademark application initially identifies the wrong applicant, real problems can arise.  Changing the applicant name in a trademark application like this has to be done with extreme caution.  It can result in the invalidation of the application.

First, a trademark application must always identify the owner of the trademark as the applicant.  When an application is filed in the name of the wrong party, this defect cannot be cured by amendment or assignment.  The application is then void and invalid.

If there was a mistake in identifying when the applicant’s name was entered, then this might be correctable.  There are only a few situations in which this correction can be made:

  • If the trademark owner provided its trade name, or its dba, but that name is not actually its legal name, then the Trademark Office does permit a correction. You can fix the application to change the applicant name from the dba to the entity’s actual legal name.
  • If the application identified a division of the company, rather than the company itself, this mistake can be corrected.
  • If you forgot to put something minor like “The” or “Inc.” then in most cases this mistake can be corrected. The Trademark Office will not tolerate any change more significant, however.
  • If there is an internal inconsistency in identifying the owner, then the Office will permit correction of the applicant name. For example, in some places, you may have listed the owner as a company and in other places as an individual; the Office will let you correct this to make all references to the owner consistent.
  • If the owner changed its name before filing the application and used the old name on the application, then the owner may correct the applicant name to the new name. You may be required to explain that the previous name and current name identify the same enterprise.
  • Identifying partners in a partnership, rather than the partnership itself, can be corrected.

Some specific situations that cannot be fixed:

  • Trademark applications that identify an employee of a company as the owner, rather than the company itself, cannot be corrected.
  • If the trademark application identifies a first company as the trademark owner, but prior to the filing date of the trademark application, that first company had actually already transferred the trademark to a second company, then the trademark application is void.
  • If a trademark is owned by a joint venture, but the application only names one of the joint venturers, then the application is void.
  • If the trademark application identifies a related company which is not the owner, then the trademark application is void. For instance, if a sister company owns the trademark application, or if a subsidiary company owns the application.


Trademark Coexistence Agreement

National Mall in August

National Mall in August

A trademark coexistence agreement is an agreement between two parties about their respective use of the same or similar trademarks.  They generally allow two trademark owners to use identical or similar marks, usually in a manner designed to avoid consumer confusion.  They are helpful in several situations.  A trademark coexistence agreement can be used to resolve disputes between two parties, or to prevent potential disputes, or to overcome rejections by the Trademark Office.

 

Trademark Coexistence Agreement to Resolve Disputes

Trademarks are fundamentally intended to prevent consumer confusion.  When two marks are the same or similar, the public can be confused about who the source of the product or service is.  This can flare as a trademark infringement dispute, where one party sues – or threatens to sue – the other party for having a trademark which is too similar to its own.

 

If the parties can resolve this dispute, they will usually execute an agreement.  The agreement might require one party to change its name, or it might allow that party to continue using its name, perhaps for a short period of time or maybe even permanently.  For those latter two options, a trademark coexistence agreement – or at least a coexistence provision – will be used.

 

To Prevent Disputes

Sometimes, before a client files its trademark application, it will conduct a pre-filing clearance search to see if there are other similar or identical marks already registered or used.  This allows the client to evaluate the risk of proceeding forward.  Occasionally, a trademark applicant will proceed forward even though there is a similar trademark already registered, because the applicant feels the mark is different.  In that event, the applicant will sometimes proactively reach out to the prior trademark registrant and request a trademark coexistence agreement to potentially head off even the unlikely risk that consumers will be confused.

 

To Overcome Rejections

When a trademark application is filed, the Trademark Office examines it before it will register the trademark.  During examination, the Office will reject the trademark application if it finds any registered marks which pose a likelihood of confusion.

 

The rejection will stand, and the application will become abandoned, unless the applicant responds and overcomes the rejection.  Often times, the applicant can present arguments based on case law or evidence.  Sometimes, however, there may be reasons to present other arguments.

 

A trademark coexistence agreement is persuasive evidence in response to a rejection.  While not completely binding, the law gives significant weight to a trademark coexistence agreement.  Examiners will generally, but not always, withdraw a rejection the applicant has a trademark coexistence agreement.  However, Examiners will refuse to accept those agreements when they fail to address real conditions and concerns.

Trademark Coexistence Agreement Elements

The Trademark Office’s desire to see “real” agreements reflects the need for a trademark coexistence agreement to be more than just an agreement to use two similar marks.  It must actually address the likely concerns of not just the trademark owners but the consumers as well.  For instance, it could discuss concerns such as:

  • The level of experience and familiarity the two parties have with the respective industry and their customers
  • The similarities and differences in the marks’ sight, sound, and appearance
  • The similarities and differences in the goods and/or services
  • The similarities and differences in the customers and channels of trade
  • Restrictions on any future trademark filings of the parties
  • Amendments to the trademark application or registration details
  • Geographic restrictions on the parties’ respective uses
  • Goods and/or services restrictions on the parties’ respective uses
  • Industry restrictions on the parties’ respective uses
  • Any limitations to how the parties’ trademarks will be displayed or styled
  • Any disclaimers that either of the parties should use
  • Any restrictions on how the parties’ goods and/or services may be advertised
  • Any restrictions on the channels of trade for the parties’ goods and/or services
  • What the parties will do in the event of actual confusion

 

Trademark coexistence agreements are not the right solution in all situations.  In some cases, a trademark coexistence agreement can weaken a trademark owner’s rights and should be avoided.  Speak with a local trademark attorney if you think you need a trademark coexistence agreement or have been approached by someone requesting you to sign one.

 



Receiving a Trademark Final Office Action

Arizona Snowbowl Ski Resort above Flagstaff

Arizona Snowbowl Ski Resort above Flagstaff

Trademark applications are examined after they are filed.  This is part of the trademark prosecution process, and it sometimes results in an initial refusal, or “office action.”  Office actions are simply official letters from the Trademark Office.  The Trademark Office uses them to communicate about issues that have to be resolved in an application. If you receive multiple office actions, one will be considered a final office action.

When any office action issues, you have an opportunity to respond.  Under current law, you have six months to file a response.  Fail to file in that time, and your application will abandon.  Often the issues in an office action can be resolved fairly straightforwardly.  Sometimes, a quick phone call to the Examiner is enough.

Occasionally, though, the issues raised are more serious obstacles, and in some cases, one response may not be sufficient.  If your initial response does not resolve the issues in the office action, the Trademark Office will typically send a second office action.  A second office action usually is a “final office action.”

The Trademark Office sends a trademark final office action when the issues are ones that were presented at least once before and when you at least had a chance to resolve them.  There are a limited number of options for responding to a final office action:

Request for Reconsideration

One option for responding to a trademark final office action is submitting a request for reconsideration.  This is essentially a second bite at the apple.  When you file a request for reconsideration, you can present new arguments and evidence to try to convince the Examiner that you are right.  If you file a request for reconsideration and the Examiner does not side with you, the application will become abandoned unless you take further action.

If you file the request early in the response period, then the Examiner might return the denial before the six months is up.  If so, then you can potentially file a notice of appeal to prevent your application from abandoning. The Trademark Trial and Appeal Board (“TTAB“) hears and decides appeals.

However, if you file the request late in the response period, the Examiner may very well return a denial after your six months has expired.  You will not have to file anything else in the application at this point, and it will abandon.

Because of these timing concerns, some applicants file a notice of appeal when they file a request for reconsideration.  This assures them an escape route: if the Examiner denies the second argument, then they will at least have one last shot with an appeal.  And, typically, when a notice of appeal is filed together with the request for reconsideration, the TTAB will actually suspend the appeal to give the Examiner a chance to review first.  After all, if the Examiner reviews it and agrees with you, then it saves the TTAB considerable time.

Appeal

An appeal takes the case off the Examiner’s desk and asks that a panel of administrative judges at the TTAB review it.  To file an appeal, you must first file a notice of appeal and then follow-up with an appeal brief.  The Examiner gets a chance to file a brief in response to yours.  You then have the option to file a reply brief – a final brief that address the Examiner’s brief.  Once the case is fully briefed, the TTAB then considers all of the briefs and the evidence of record.  It renders a decision.  The TTAB frequently affirms the Examiner, so you must pursue an appeal with caution and care.  If the TTAB disagrees, your only option to save the application is to further appeal the decision into the federal court system.  If the TTAB agrees with you, however, the case will be returned to the Examiner with instructions to allow the application to continue through prosecution.



Trademark Applications Can Be Expedited or “Special”

Lemon Reservoir, Durango, CO

Lemon Reservoir, Durango, CO

The US Patent and Trademark Office processes trademark applications in the order in which they are received. Before 2020, that led to wait time of about 3 months before an application would be substantively reviewed by a trademark Examiner. This year, examination has slowed a bit, and Examiners are taking about 4 months to initially review a trademark application.

This 3 to 4 month delay right from the outset can feel like an eternity (though it doesn’t even compare to the delays for patent applications, which can sit 1-2 years after filing before receiving examination). But you are usually stuck with it. There are only two procedures in which an application can be made “special,” so that initial examination will be expedited: requests to make special and petitions to make special.  Detailed information is below, and official USPTO information is available at TMEP 702.02.

Request to Make Special

A new application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired will be made “special” upon the request of the applicant. However, the applicant must be the prior registrant or the assignee of the prior registrant, the mark must be the same as the one in the cancelled or expired registration, and the goods/services in the new application must be identical to or narrower than the goods/services in the cancelled or expired registration. Because the request to make special is just a request and not a formal petition, there is no petition fee or other fee associated with the filing.

A request to make special must reference the trademark application serial number, so it can’t be filed contemporaneously with a new application. Instead, we file the application and then, after being award an application number, file the request. The electronic TEAS filing system has a form for these requests. This allows the designated office to receive and review the request, which improves processing time.

When completing the form, you must provide sworn statements regarding the new application and the old registration. For instance, you must provide: (1) the registration number for the prior registration; and (2) a specific statement explaining that: (a) the mark in the new application is identical to the mark in the cancelled or expired registration; (b) the goods/services in the new application are identical to, or narrower than, the goods/services in the cancelled or expired registration; and (c) the owner of the prior registration is the same as the owner of the new application.

Petition to Make Special

A Petition to Make Special can only be used when you need to expedite initial examination of an application because there is pending litigation, actual or threatened infringement, or the need for a registration as a basis for securing a foreign registration. There are special requirements, and these petitions require a great deal of care and attention when preparing. They also have a small filing fee associated with them ($100 at the time of this writing).



US Trademark Applications Based on Foreign Trademark Applications and Registrations

Trademark applications in the US can be based on use, an intent-to-use, or a foreign trademark application.

Spud Lake north of Durango, Colorado

When a trademark application has been previously filed outside the US, for certain entities there are ways to enter the US based on that foreign trademark application.  Applications can be filed under what is called 44(d) and 44(e) bases.  There are a lot of wrinkles to prosecution under both bases, and you should consult an attorney before filing an application under either.  For example, certain actions must be taken if you, as the owner of the foreign trademark, are not domiciled in the United States.  These actions can affect the cost, timeline, and registrability of the trademark application.  And particular timelines must be followed if you are or have filed a number of foreign applications before the US one.  Despite these and other nuances, the below provides a brief overview of the two different foreign-basis processes.

Section 44(d) Filing Basis

Under Section 44(d), your US trademark application can be filed and granted a priority date because you filed a foreign priority trademark application less than 6 months before.  You must claim an intent-to-use the trademark in United States commerce.  The scope of the goods and services identified in the US application is confined by the foreign trademark application; it cannot be broader than the priority application.

The Examiner will then begin to review the US application.  If there are issues with it, the Examiner will send an office action presenting those issues, and you will have 6 months to respond and overcome those issues.  If you do overcome those issues – or they are never raised in the first place – then the Examiner will suspend the application pending an update on the foreign trademark application.

If the foreign trademark application registers and you provide proof of such, then the US application can be converted from a 44(d) basis to a 44(e) basis, discussed below, and the application will be published for opposition (https://galvanilegal.com/wp/trademark-opposition/).  If, however, the foreign application is abandoned, your US application may be re-suspended, or you may have the opportunity to rely on some other filing basis without forfeiting the priority date.  For example, if you have begun to sell the product in the US, you can change the intent-to-use basis of the US application to an actual in-use basis.

It is important to remember that Section 44(d) only provides a basis for receiving a priority filing date – an effective filing date which is earlier than the day the application was actually filed in the US – because of the foreign trademark application.  It does not provide a right to publication or registration.

Section 44(e) Filing Basis

If you own a valid foreign trademark registration, you may be able to base a US trademark application on it under Section 44(e).

When you file an application under 44(e), you must claim a bona fide intent to use the mark in US commerce, the scope of the goods or services cannot exceed that of the foreign trademark application, and you have to submit a copy of the foreign trademark registration from the country of your origin.

If the Examiner finds that all filing requirements under Section 44(e) are met, the US trademark application will be approved for publication.  If not opposed, it will then proceed toward registration.  Section 44(e) thus provides a basis for registering a trademark in the US without actually using it in the US.  There are some drawbacks to this, but it is nonetheless an important exception to the conventional requirement that a mark be used in order to be registered.



Trademark Office Changes Rules About Personal Emails

Descanso Gardens

About two months ago, the Trademark Office announced entities would have to begin disclosing their personal email addresses in trademark applications and trademark registrations.  I joined almost 200 trademark attorneys in protest of this rule.  We argued that it would expose clients and pro se applicants to spam emails, would eliminate applicants’ privacy, and would provide no real benefits.  The Trademark Office caved on some filings, but not all, and we were required to disclose applicants’ email addresses.

On Friday, the Trademark Office altered course.  While still requiring that personal email addresses be disclosed in trademark applications and trademark registrations, those addresses will be hidden from public view.  The exception is if a trademark applicant files an application on his or her own.

The announcement from the Trademark Office:

We’re taking steps to address your concerns about owner email addresses being visible in TSDR. The owner email address field is now masked in TEAS and TEASi documents viewable in TSDR, including submissions viewable in the documents tab, application programming interfaces (APIs), and PDF downloads. Unrepresented owner email addresses will still be viewable in the correspondence email address field. When you open a TEAS or TEASi document in TSDR, you’ll see ‘XXX’” in the owner email address field. We believe this will help reduce the number of solicitations you receive.



Protecting Cannabis-Related Intellectual Property

Many say cannabis is the next “Wild West.”  Although a convenient metaphor, it is not entirely appropriate.  Expansion into the American West was full of risk, speculation, and fraud.  The growth of the cannabis industry has been continuous and risky, and while some of the players in the industry have questionable practices and ethics, most are sophisticated business people strategically watching the market and the law.

Cannabis-Related Intellectual Property

No Clear Roads Ahead for Cannabis Trademark Protection (photo: Grand Tetons)

For cannabis, companies must negotiate a complex and evolving patchwork of state and federal laws.  Both levels of protection can be used to gain greater security.  Federal protection is advantageous because it is centralized, national, and thus likely to be cheaper and easier to maintain and administer.  However, federal protection has been slow to evolve, and has been risky to pursue.

CSA and FDCA Regulations

The availability of federal cannabis trademark registration has waxed and waned in the past ten years, and in the last year has been completely thrown for a loop.  While THC-related trademarks have always been impossible to register, CBD-related ones could be through certain avenues.  Trademark Examiners began issuing rejections against THC marks under the Controlled Substances Act (“CSA”) a few years ago – but did so inconsistently.

The industry hoped that the 2018 Farm Bill would remove the CDA blockade, and it did, but only for trademarks used in connection with products that contain certain minimal levels of CBD only.  However, the Trademark Office also began citing the Food, Drug, and Cosmetics Act (“FDCA”), administered by the FDA, which prevents the sale of anything containing a product that is under clinical investigation by the FDA.  As such, any CBD-containing product which is edible or ingestible – and some CBD products which are topically applicable – now cannot be registered for trademark protection.

Federal law has been a moving target for the past year or two, which has caused trademark owners to file trademark applications, change strategy midstream, split applications into risky and less risky new applications, and generally just keep their fingers crossed during the whole process.  While average processing time for most trademark applications can be 6-12 months, cannabis trademark applications are much longer.

State Trademark Protection

State trademark protection can be much easier to obtain, but it has to be done on a state-by-state basis, obviously.  This can become expensive and more difficult to keep track of.  Additionally, some of the states have changed their rules governing what is and is not permissible, requiring trademark owners to continually re-evaluate their approach.

Patent and copyright protection is much more straightforward, because they are not dependent on some of the same vulnerabilities that trademark protection has.  While trademark protection must be based on use – and thus lawful, permitted use – patent and copyright protection is not so limited.  A CBD or THC related invention is a patentable invention (presuming it meets all requirements of patentability) – and its quasi-legal subject matter does not negate that.  Same with copyrights – as long as the subject matter is something which is original and creative, it can be protected with copyright.

Despite this, we find that trademark protection is the one that cannabis companies usually want.  We work with a number of clients in this space and find that copyright is a secondary concern and patents a tertiary one, if at all.  Generally, protecting the name, the logo, and the brand is of the highest importance.  As a result, we spend a lot of time discussing strategy, short- and long-term risks, and what the road ahead holds for the client.



US Trademark Office Proposes Requiring Foreign Trademark Applicants to Use a US Attorney

About two months ago, the US Patent and Trademark Office proposed a rule change for representation of foreign trademark applicants. The rule would affect trademark applicants, registrants, or parties to a proceeding such as an opposition or cancellation, whose domicile or principal place of business is not located within the United States or its territories. If the rule is implemented, these parties – or their foreign attorneys – would need to seek an attorney who is licensed to practice within the US.

The change has three stated goals. First, to increase “customer compliance” with federal trademark law. The second goal is to ensure the accuracy of submissions to the USPTO, and the third is to ensure the integrity of the US trademark register.

These goals all strike me as a little impersonal and machine-like, which may be the purpose behind an efficiency-driven rule change. They really just boil down to the hope that using a US attorney will increase the likelihood that the trademark application or registration, or proceeding flows smoothly through the Trademark Office because the person responsible for it will more likely be familiar with the Trademark Office’s rules.

Of course, I’m not sure that these rules are effective measure for achieving the goals: plenty of US attorneys file trademark applications but shouldn’t – just because an attorney is barred in a US state does not mean that he or she is qualified to file a trademark application with the USPTO. We see lots of non-trademark attorneys that screw up filings because they just don’t know what they are doing. I am sure there are many foreign-based trademark attorneys who are better at prosecuting US trademarks than US non-trademark attorneys.

Many practitioners believe this is a response to the influx of Chinese sellers on Amazon and their use of protections offered through the Amazon Brand Registry 2.0 platform. This seems possible. We have seen more cases filed by Chinese applicants without an attorney of their own. Last week, we filed two actions against trademarks owned by Chinese-based applicants without any attorney at all. In both cases, the applications included specimens that appeared fraudulent, digitally-created photograph mock-ups meant to trick a US Examiner into accepting the application. And, both were instances where the applicants were also selling knock-off products on Amazon of my clients’ products. More so, it is well known that, while it costs as little as $225 to file a trademark application pro se, the Chinese government will award around $800 to a successful registration. Therefore, filing fake applications can be a revenue source for a Chinese resident.

The rule change is certainly good news for US attorneys, because it will drive more business to us. Much of that business likely doesn’t really need us – it can probably be competently handled by an experienced foreign attorney. But, some foreign applicants will benefit. And, some fraudulent trademark applications will be curtailed. If the Trademark Office were to require foreign trademark applicants to first find a US attorney, this would raise the bar for filing slightly and would undoubtedly reduce the number of junk trademark applications.

We handle trademark applications in the US and outside the country frequently, both for domestic and foreign clients.  If you have questions about this rule change, or if you are in need of a US attorney, please don’t hesitate to contact us or call +1-602-281-6481.



Changing a Trademark From One Word to Two, or Two Words to One

Trademark applications

Changing a Trademark

Lemon Reservoir, Durango, CO

frequently are filed and then need to be amended slightly. Changing a trademark can be straightforward. Sometimes these amendments are to change the identification of goods or services for the application, or to change the way the mark is described.

Sometimes, though, the trademark itself needs to be amended. This always needs to be done with extreme care and planning. This need usually arises in the context of an intent-to-use application, where an entity files a trademark application on a mark it is planning to use. Sometimes, the company or person is planning on using one form of a mark but then when the product actually goes to market, the form changes. Many times, I’ve seen a mark get filed as one word or as two words and then need to be switched to two words or one word, respectively. In other words, an application may be filed in the form ONE TWO and then need to be changed to ONETWO, or be changed from ONETWO to ONE TWO.

Changes like this are often driven by the way the mark is eventually actually used in commerce. Of course, preferably these changes can be anticipated and dealt with early; the timing of the change within the course of prosecution of the application can affect the ability and ease of making the change. Since the mark is usually already being used, changing the actual trademark is usually not an option. In other words, re-branding to keep the trademark consistent with the application is usually not an option – the costs of new designs, new printing, new labels, new stickers, new stitching, etc. are prohibitive. So usually the trademark application must be amended.

I do not recommend making changes to the mark in the application without the assistance of a trademark attorney. Per the trademark examination rules, a proposed amendment cannot materially alter the mark. If an Examiner finds that a proposed amendment materially alters the mark, the Examiner will refuse to enter the amendment, and then the application’s mark and the actual trademark will forever be inconsistent, leading ultimately to trademark application being abandoned. In some cases, depending on the timing of the amendment, the Examiner may not even be able to enter it, even if he or she would otherwise approve it. In other cases, it is better to file a response or a statement of use that shows the mark inconsistently, wait for the Examiner to raise the issue, and then respond.

Though changing the mark may seem like a very simple thing to do, it can have disastrous consequences, including abandonment of the application, and so careful planning and good counseling is absolutely necessary.



Filing an Amendment to a Trademark Application After Issuance of a Notice of Allowance but Before Submission of a Statement of Use

A trademark application which is filed on an intent-to-use basis always presents slight risks since the application is filed before the owner has begun using the trademark and before the owner knows 100% how the trademark will be used. There is always the possibility that the trademark will be changed somehow when the mark is actually used.  In such cases, it can be necessary to file amendment to a trademark application so that the application reflects reality.

Generally, once a trademark application is filed, only limited changes can be made to the application, such as removing goods or services, amending the mark description, very minor changes to the mark itself, changing the attorney, some changes to the owner identification. These changes become more difficult to make the longer the application processes. Usually, the changes are most easily made before examination occurs (typically in the first 3-4 months). Once examination has begun, Examiners will often be more reluctant to approve changes. Of course, some changes may be necessitated by issues raised in an Office Action from the Examiner. After examination, most marks are scheduled for publication. Any changes should really tried to be made before publication, because once the trademark application is published, the application can only be changed on very limited grounds. Some changes cannot be made at all. Some changes require a petition to the Director.

Once publication ends, and a Notice of Allowance has issued in an intent-to-use trademark application, changes become even more limited. Generally, the only amendments that may be entered in an application between the issuance of the notice of allowance and the submission of a statement of use are: (1) the deletion of specified goods or services, or the entire description of the nature of the collective membership organization, from the identification; (2) the deletion of a basis in a multiple-basis application; and (3) changes of attorney and changes of address. The Trademark Office will enter other amendments during this period, but only with the express permission of the Director. This requires filing a petition laying out facts and reasons for the change, as well as payment of the petition fee. If the Director determines that the amendment requires review by the examining attorney, the petition will be denied and the amendment may be resubmitted with the statement of use in order for the applicant to preserve its right to review.