(a) An application subject to an opposition may not be amended in substance nor may a registration subject to a cancellation be amended or disclaimed in part, except with the consent of the other party or parties and the approval of the Trademark Trial and Appeal Board, or upon motion granted by the Board.
(b) If, in an inter partes proceeding, the Trademark Trial and Appeal Board finds that a party whose application or registration is the subject of the proceeding is not entitled to registration in the absence of a specified restriction to the application or registration, the Board will allow the party time in which to file a motion that the application or registration be amended to conform to the findings of the Board, failing which judgment will be entered against the party.
(c) Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration proceeding.
(d) A plaintiff's pleaded registration will not be restricted in the absence of a counterclaim to cancel the registration in whole or in part, except that a counterclaim need not be filed if the registration is the subject of another proceeding between the same parties or anyone in privity therewith.
[54 FR 37597, Sept. 11, 1989, as amended at 72 FR 42263, Aug. 1, 2007]
Notes of Decisions
Brunswick Corp. v. British Seagull Ltd. & Outboard Marine Corp., 35 F.3d 1527 (Fed. Cir. 1994).
· cites it 3× “Mercury asserts that the Board erred by failing to consider its offer to limit its application to a specific, well-defined shade of black under 37 C.F.R. § 2.133 (b) (1993). This shade, “Mercury black,” allegedly embraces “three dimensional quantitative lightness/chroma/hue…”
Enter. Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 330 F.3d 1333 (Fed. Cir. 2003).
“37 C.F.R. § 2.133 (c) provides, '‘[geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration proceeding.”
Ghomeshi v. Strongvolt, Inc. (Fed. Cir. 2021).
· cites it 2× “Pursuant to 37 C.F.R § 2.133, 3 Mr. Ghomeshi moved to delete most of the goods initially listed in his application.”
Game Plan, Inc. v. Uninterrupted Ip, LLC (Fed. Cir. 2025).
· cites it 2× “Second, Game Plan argues that the timing of the 2019 Assignment violated 37 C.F.R. § 2.133 (a). Appellant Br. 17. We disagree.”
Royal Crown Co., Inc. v. Coca-Cola Co. (Fed. Cir. 2020).
“Coca-Cola also main- tains that the Board is permitted to grant an unconsented motion to amend the application under 37 C.F.R. § 2.133 (a), and that the basis of the Board’s decision is suf- ficiently clear under the APA.”
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