You’d like to refresh your trademark to reflect your changing business. You wonder, can you modify an existing trademark? The answers depend on the specifics of the change you’d like to make to your original trademark.
Can You Modify an Existing Trademark?
You can modify the trademark you’re using on your products and services, but you cannot modify an existing registration, so unless you register your newly modified trademark, it will not have the same scope of protection as a prior, unmodified, registered trademark. There are some very limited circumstances where you can amend a pending application or make minuscule alterations, as outlined below.
Minor Modifications of Applied-for Trademarks
Depending on how you applied for your trademark, you may be able to make minor modifications of your trademark. The USPTO permits you to register a trademark in “standard character format” (i.e. a company name or product brand) or a “special form format” (i.e. a logo or specialized font). You may file a voluntary amendment to make minor modifications to non-distinctive portions of standard character (word) trademark application prior to an examiner’s review of the application. You generally cannot make modifications to the application after the examiner has reviewed it, unless the examiner recommends or requires certain minor modifications for clarity or other reasons.
A special form trademark is a specialized design. You cannot modify this mark application. Instead, you’ll need to file a new application.
Amending Your USPTO Registered Trademark
You may wonder, can you modify an existing trademark by filing an amendment to your original USPTO registration? The USPTO allows you to amend your registered trademark only in very limited circumstances.
What is a trademark amendment that may be acceptable? Under federal law, you can file a trademark amendment application if your requested change “does not materially alter the character of the mark.” The modified mark must contain the “essence of the original mark.” It must also create the “same impression as the original mark.” This means that the USPTO will consider only amendments that give the public the same impression as the original mark. Any amendment to the trademark must render a trademark that the public would recognize as being essentially the same as the original trademark.
If you have only a minuscule change to make on your trademark, amending your trademark has some benefits. For example, you’ll be able to keep your original filing date, and it costs less than filing a new trademark application. The drawback of amending your registration is that, if approved, your modified mark will replace the original mark as the officially registered mark. This will be sufficient for people who wish to abandon their old trademarks. But if you want to ensure that both your old and new trademarks are equally protected, you need to file a new trademark application for the new mark.
You may wonder, what is a trademark amendment that will be acceptable? You may file an application to amend your trademark if you need to add a disclaimer. You can also amend your trademark to remove goods and services. However, you cannot add new goods and services to it. Similarly, if you’d like to create a new version of your trademark for a new good or service, you’ll have to file a new trademark application.
The USPTO allows amendments in very limited circumstances.
Caution with Using an Unregistered Trademark Modification
You can use any variation of your trademark that you desire, but there are some potential risks. Let’s take the example of a registered trademark. If you use a modified version of your trademark in commerce, you’ve modified the “sphere” of other similar trademarks that would constitute infringement, even if only slightly. With a modified trademark, it’s theoretically possible for a third party to develop branding that infringes only on your modified trademark but not your registered trademark. But your remedies for infringement against the unregistered modification are more limited than your remedies for infringement against the registered trademark. For the broadest protection, it’s best to be consistent in branding with your registered trademarks and register every variation you intend to use, with some exceptions that an attorney is best suited to advise on.
Hire Our Skilled Lawyers For Your Trademark Modification
Modifying your trademark and maintaining protection depends on your specific needs. An experienced intellectual property attorney can help you make the best decision for your business. BrewerLong has helped many small and medium-sized businesses with their intellectual property issues, including trademark modifications. Contact us today.