Trademarks are words, phrases, symbols, designs, and other brand identifiers that help distinguish one's goods or services from competitors. This protection helps guard against fraud and counterfeiting. Changing trademarks is often a smart business strategy. Companies might do this to modernize, grow, or reposition their brand. It can also help during mergers or when dealing with negative publicity.

This article explores if changes to trademarks can lead to a registered mark losing its legal protection. By so doing, we'll assess whether trademark alterations are permissible under the Trademarks Act, whether alterations can be made during the application stage; whether alterations can be made post registration; the permissible and impermissible alterations; the procedure for altering a mark; the implications of altering a mark; and why Trademarkia is your best shot at ensuring your alteration or intended alteration is compliant enough to retain the legal protections attached to your trademark.

Can you alter or change your trademark?

US trademark laws permit the alteration of marks in three instances:

1. Upon application by the owner of a trademark for any good reason

A trademark owner can apply to the United States Patent and Trademark Office (USPTO) for an amendment of their mark. If the amendment doesn't significantly alter the trademark, it'll be allowed.

2. Correction by the USPTO on account of material mistakes through their own fault

When there's a clerical error by the USPTO in a trademark registration, they typically issue a certificate. This certificate describes the mistake. Then, they make the correction at no cost to the trademark owner.

3. Correction of an applicant's mistake

If an applicant makes a minor, non-substantive error in their registration, the USPTO can correct it. They can issue a certificate of correction or a new certificate, but the applicant must pay the fees. However, if the error is substantial, the applicant will need to reapply.

Can alterations be made during the application stage?

From the third instance above, it's clear that an applicant can alter a trademark at the application stage before registering it. At this stage, an applicant can request changes through the Post-Approval/Publication/Post-Notice of Allowance amendment form either before publication or after publication and approval but before registration.

If someone opposes your trademark during the publication period, you may request changes. However, opposed applications cannot be amended without the approval of the Trademark Trial and Appeal Board (TTAB), even if the opposing party consents.

Additionally, any amendment must still pass the material alteration test. If the proposed change significantly alters the mark's character, making it necessary for the USPTO to re-publish it for new opposition opportunities, the amendment will be denied.

Can alterations be made after registration?

As per the first instance highlighted above, owners of registered trademarks can, for any good reason, apply for changes to their marks by filing a Section 7 Request for Amendment or Correction of Registration Certificate form.

Alterations that materially alter an existing mark are not allowed

Amendments to marks can happen during the application phase and after registration. However, the USPTO doesn't accept all types of changes. Amendment applications must pass the material alteration test. This means the proposed changes shouldn't significantly change the trademark's character.

Material alteration is decided by comparing the proposed change to the registered mark. If a proposed change to a registered mark needs republication, it won't be approved. This is because it will create room for opposition.

Generally, for an amendment to pass, it has to contain the essence of the original mark and create the same impression as the original mark.

Determining the materiality of a change can be complex. It may also vary based on the type of mark registered. Our team of attorneys has deep experience with amendments. We use this knowledge to help ensure your proposed amendment meets materiality standards. This way, we can protect your goods and services effectively.

Permissible and impermissible alterations

Generally, alterations that don't materially alter the character of the original mark and those that contain the essence of an original mark are permissible. Examples of these include:

Minor font, style, or color changes that do not go to the core of the design.
Slight design modifications that do not alter the essence of the mark.
Removal of non-distinctive elements, such as the name "Inc." after a mark, provided the core of the mark remains unaffected.
Addition of generic terms or descriptive terms, such as adding the word "Services" to the mark “Trademarkia.”

Similarly, there are alterations that are generally considered impermissible. These include:

Changing the form of the mark from a word to a symbol or a design.
Removing or changing a distinctive term - for instance, "Blueband" to "Whiteband."
A substantial design overhaul.
Changing the aural identity of a mark by changing its sound or pronunciation, for instance, "Nike" to "Nick."

Secure your brand's future with legally sound trademark decisions

Altering a trademark isn't a decision to take lightly. While minor, non-material changes are welcomed under US trademark law, any alterations that significantly change the character of a mark can deny it legal protections. To ensure your modified mark stays protected, it's important to appreciate the fine line between material and immaterial alterations.

The process of determining materiality is complex and requires expert knowledge of trademark law, USPTO procedures, and legal precedent. Without proper guidance, businesses risk invalidating their trademarks, opening the door to infringement, loss of brand recognition, and costly legal disputes.

At Trademarkia, we specialize in navigating these legal intricacies. Whether you're considering a small adjustment or a strategic rebranding, our experienced attorneys can help ensure that your trademark alterations comply with legal requirements while maintaining the protection your brand deserves. Don't leave your intellectual property to chance. Let Trademarkia guide you in making legally sound and business-savvy trademark decisions.

Additional resources:

Glossary of legal terms:

Trademark - A word, phrase, symbol, or design that identifies and distinguishes a brand's goods or services from others.
USPTO (United States Patent and Trademark Office) - The federal agency responsible for registering trademarks and patents in the US.
Material alteration - A significant change to a registered trademark that affects its distinctive character, making it ineligible for amendment.
Amendment - A formal request to modify a trademark application or registration without materially altering the mark.
Section 7 Request for Amendment or Correction of Registration Certificate - A form submitted to the USPTO to request changes to a registered trademark.
Certificate of correction - A document issued by the USPTO to fix minor errors in a trademark registration caused by either the applicant or the USPTO.
Post-Approval/Publication/Post-Notice of Allowance Amendment - A request to modify a trademark application after approval but before final registration.
Opposition proceedings - A legal process where a third party challenges a trademark application before it becomes registered.
Trademark Trial and Appeal Board (TTAB) - A body within the USPTO that handles disputes related to trademark registration, including oppositions and cancellations.
Descriptive term - A word or phrase that directly describes a product or service; often not registrable as a trademark unless it acquires distinctiveness.
Generic term - A common name for a product or service that cannot be trademarked (e.g., "computer" for a computer brand).
Distinctive element - A unique feature of a trademark that sets it apart from others and is crucial to its legal protection.
Aural identity - The sound or pronunciation of a trademark, which contributes to its recognition and legal distinctiveness.
Publication period - The time during which a trademark application is published in the USPTO Gazette, allowing third parties to oppose the registration.
Mergers and acquisitions - Business transactions where companies combine, or one company purchases another, often requiring trademark adjustments.
Permissible alterations - Minor changes to a trademark (e.g., font, style, or adding descriptive terms) that do not affect its core identity.
Impermissible alterations - Changes that significantly modify a trademark's character, such as changing its design, name, or pronunciation.

FAQs

Can I add a word to an existing trademark?

You can modify the trademark you're using on your products and services, but you cannot modify an existing registration owned by a different person. Unless you register your newly modified trademark, it won't have the same scope of protection as a prior, unmodified, registered trademark.

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Wesley Omondi Okoth

AUTHOR

Reporting to our Pretoria office, Wesley is a legal content writer at Trademarkia, and has extensive experience writing on legal subjects. His works have been cited by leading institutions such as the UNCTAD and Deal Makers Africa. He holds a Bachelor’s Degree in law, and a postgraduate professional qualification from the Kenya School of Law. In his free time, Wesley enjoys creating music and painting landscapes in the company of his canine friend, Damian (first of his name) who leaves no shoe unturned.