Whether you can change your trademark is going to depend on how big a change you’re considering. It’s an issue that the trademark office deals with frequently, as companies update their brand’s image. Determining if an amendment can be filed, or a new application submitted, depends on whether your change is classified as material.
An amendment is much easier, so companies often prefer this approach. It’s also faster and cheaper as you don’t have to pay for a new application. An attorney will be best able to advise you on whether you can change your trademark through an amendment, or whether a whole new application is required.
What Is a Material Change?
Like most subjective issues in trademark and patent law, the decision as to whether something is a material change is at the discretion of the examiner. While there are some guidelines in the examining procedure, they aren’t particularly clear. Specifically, the US Patent and Trademark Office says:
The general test of whether an alteration is material is whether, if the mark in an application for registration had been published, the change would require republication to present the mark fairly for purposes of opposition. If republication would be required, the amendment is a material alteration.
At a basic level, if someone would still easily recognize the trademark as yours with the updates, then chances are it’s not a material change and you can get away with filing an amendment.
So, if you were changing your logo to update your typeface, or simply rearrange elements, like the image shown below, those likely aren’t material changes. However, if you’re omitting features or words, or adding new images or design elements, then that’s probably going to be a material change that requires a new application.
If the mark is solely made up of words, like your company name or slogan, it depends on if it changes the meaning. Think of how, back in 2019, “Dunkin Donuts” changed its name to just “Dunkin.'” The name change itself was to reflect that the chain sold more than just donuts. As it affected the meaning, it was a material update that required a new application. Of course, word removal isn’t always out of line. If it’s a non-distinctive word like “The” or “Co.” it may be permissible to remove with a simple amendment.
With names or slogans, it’s easier to make aesthetic updates. Things like your lettering choice, color, or size may be eligible for an amendment—unless you’re using some kind of special form—like how McDonald’s uses the golden arches in its name. Removing something like that would be a material alteration.
How To Amend Your Application
If your attorney has determined that your updated logo is not a material change, then your attorney can file an amendment through the USPTO. One of the more common routes is submitting a voluntary amendment form.
This amendment form is only allowed in the following circumstances:
- You’re not using it to respond to action from the USPTO (for example, if your trademark was denied)
- You’re requesting the change prior to application examination or approval
If the trademark is post-publication, but you have not yet received a Notice of Allowance, then you can file a post-publication amendment form. If you have received a Notice of Allowance, you’re either going to have to submit the updated information when you file your statement of use, or you can file a Petition to Director.
While an amendment may be simpler than a new application, it can be very hard to know which form to file. Filing the wrong one will result in a denial, which can create a lot of trouble on your end. Amendments also come with a serious limitation for international trademarks.
A Note on Madrid System Registration and International Marks
One thing that is very important to note with regards to trademark amendments is that it is not possible if you’ve submitted your original trademark for Madrid system recognition. The entire Madrid process is based on your original application. If you’ve made any major changes to your initial application, you’ll have to file a new application for international recognition.
If you’ve filed for international acceptance with an individual country, you’ll face the same issue. The process for updates is often much more stringent and requires a new application, rather than an amendment.
There are situations where you can change your trademark once it’s filed, but it can be tricky. It’s best to work with an attorney to determine whether you can simply file an amendment, or if you’ll have to submit a new application. They will be better able to guide your decision in a way that saves you money and time.
Bold Patents can guide you through successfully changing your registered trademark. Schedule a free screening session with us today by connecting with us online or calling 866-922-0578.
Legal Note: This blog article does not constitute legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.