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 registration. It also includes filing your trademark application and going through the registration process. All of this can (and in most cases should) be done before your business opens. But because most businesses have at least some uncertainty prior to opening, many clients want to know what level of flexibility they have when it comes to their trademark matters. They aren’t sure whether they will be able to make changes to their trademark in the early going, or even after they have used their trademark for years. In this post, we will look at the rules regarding changes to a trademark that apply both during the application process, as well as after registration is complete.
If you want to make changes to your trademark during the trademark application process, then there are various points during that process at which you can file an amendment your application. You can also file to make changes to the trademark in an existing registration. Regardless of when you file these changes (called an “amendment”), the key here is that your changes cannot represent a material alteration of the mark. The test used by the Trademark Office is whether (assuming that the application had already gone through its publication period) the updated mark would need to be republished to give others a fair chance of opposing the application. If not, then the change is not material, and the application or registration can move forward with the trademark changes.
This standard of “material alterations” is used whether the mark being applied for is a standard word mark, a design mark (such as a logo without text), or a design mark that also has wording incorporated. Word marks that use a particular style, font, or size can be changed without a material alteration in many cases. For logos, the question is whether people are likely to view the altered mark as the same mark. If the change is too substantial, then it will likely be rejected by the Trademark Office. Obviously, the question of whether certain trademark changes represent a material alteration is very subjective. Making these kinds of changes may put your application or registration in jeopardy. Therefore, it is important that you speak with a trademark attorney before you file such an amendment.
This is also an important issue for those that filed their application on an Intent-To-Use Basis. That is because you will still have to show use of the mark before your application matures into a trademark registration. If you change the mark and put it into use, then your Statement of Use will not show use of the mark that you applied for. If you cannot successfully amend your application because the change is a material one, then you will have two challenging options: (1) either give up the mark that you have changed to, and go back to the original to show its use, or (2) to let your application go abandoned, and then file a new one for your updated mark. Material changes to your mark may mean that you’ve thrown away the money that you’ve spent on your trademark application. And to new businesses, this is often money that you just cannot afford to waste like that.
Are You Considering Minor Trademark Changes or Updates to Your Application/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.
