The best time to mold and create your brand is before you start your business. This includes performing a trademark search to see if your chosen business name is available for use and registration. Once you have conducted a search that yields a positive outlook, you will want to file your trademark application. From there, you will need to actually use your trademark in commerce to acquire rights. Sometimes things do not go so smoothly, though. What if you decide to change the trademark you want to use? Can you make changes to your trademark? In this post, we will discuss making amendments to your trademark and what kinds of changes are permissible.
When Can I Make My Trademark Changes?
Of course, you should carefully consider whether changing your trademark is the right decision for you. Re-branding can be a difficult and costly endeavor. Depending on how drastic the changes are, you may need to conduct a new trademark search. While you are free to change your trademark, doing so will impact any applications or registrations for the trademark you have with the U.S. Patent & Trademark Office (USPTO).
If you have a pending application, you can file to make changes to your trademark during the application process. There are certain points in the process where you will have the opportunity to do so. Similarly, if you already have a federal registration you can file to make changes to your trademark, as well. However, it is important to understand in advance whether your proposed changes are likely to be accepted by the USPTO.
What Kinds of Changes Are Permissible?
Regardless of when you file to change your trademark (this is called an “amendment”), your changes cannot represent a material alteration of the mark. The question of what represents a material alteration of a trademark can be tricky. While there is no universal rule, here are some common situations where a change may be acceptable:
- Adding/removing a space between words;
- Adding/removing punctuation;
- Adding/removing articles like “the”;
- Adding/removing generic words/phrases
This “material alteration” standard is used whether the trademark is just for wording, a design mark (such as a logo without text), or a design mark that also has wording incorporated. Trademarks consisting of stylized wording (i.e. that use a particular style, font, or size) can be changed without a material alteration in many cases. For designs, the question is whether people are likely to view the altered design as the same trademark. If the change is too substantial, then it will likely be rejected by the Trademark Office.
The material alteration standard is very subjective. Making changes to your trademark may put your application or registration in jeopardy. Therefore, it is important that you speak with a trademark attorney before changing your trademark or filing to make such an amendment.
Amending Trademarks for Statements of Use
The issue of amending trademarks also frequently comes up with applicants that filed their application on an intent to use basis. For these applications, the owner has to show use of the trademark before they can receive a registration. This is done by filing a statement of use. However, if you changed your trademark before you make the statement of use filing, it will not match the trademark appearing in your application. If that is the case, you will need to amend your trademark as part of the statement of use filing.
Hopefully if your trademark has changed, you simply amend the mark in your application when you file the statement of use, and the USPTO accepts it. On the other hand, let’s say that the amendment is rejected because it represents a material change. You would then need to successfully argue that the amendment is not material in order to overcome such a rejection. If you are not able to do so, your application will go abandoned. While you could file a new application for the updated trademark, this would obviously take more time and money. Moreover, you would lose the benefit of your earlier application filing date.
Material changes to your mark may result in you losing the money that you have invested in your trademark application. To new businesses, this is often money that you just cannot afford to waste like that. To avoid this situation, you should really consult with an attorney before making any changes to your trademark.
Are You Considering Making Trademark Changes or Updates to Your Application or Registration?
If you are considering filing an amendment to make trademark changes to a pending application or existing registration, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
