Why Refile When You can Amend? Permissible Amendments to U.S. Trademark Registrations

U.S. trademark practice is unique in many ways, with many esoteric requirements and practices that are not present in most other countries. The most common example is the stringent bona fide use in commerce requirements for maintenance of a trademark between the 5th and 6th year after registration. However, a little-known feature of U.S. Trademark Law is that it permits the amendment of an existing U.S. trademark registration in limited circumstances. This generous benefit is useful to preserve a long-registered trademark that has acquired significant goodwill and consumer recognition during its lifetime, but that has been updated to refresh the brand’s identity.

To maintain a registration of a trademark in the U.S., it must be used exactly as it has been registered. However, a word mark may be used in any font, stylization, layout, size, or color, and a black and white design mark may be used in any color or size. These examples are within the requirements of “used exactly as registered” and are not incongruent with the requirement for use of a trademark as registered.

As companies evolve, brands and marketing campaigns are updated and trademarks often change and grow. Sometimes, a company adopts an entirely new trademark and brand identity for a product that is unrelated to the original mark. For example, in 2009, ELECTRASOL dishwashing detergent was renamed FINISH, and in 1983 DATSUN was renamed to NISSAN. In these examples, the new trademarks were completely different from the pre-existing marks, with the old brands being discarded completely. What about situations where the changes are more subtle, like when BURLINGTON COAT FACTORY rebranded to BURLINGTON or VALLEY NATIONAL BANK rebranded to VALLEY?

If a trademark is no longer being used as it is registered, then an existing registered trademark can no longer be maintained. An attempt to maintain a trademark with a specimen showing a mark that does not match the trademark as registered will likely be rejected. This is especially true in recent times. The U.S. Patent and Trademark Office (USPTO) has become very stringent in the examination of trademark maintenance submissions. A maintenance filing has a very high likelihood of being rejected if the specimen evidencing use does not match the trademark as registered. Typically, the USPTO will issue an Office Action and the Registrant must then re-submit a better, matching specimen that was in use when the maintenance was filed.

However, in some cases, it makes sense to amend the trademark registration prior to filing for maintenance. U.S. Trademark Law permits amendments to existing trademark registrations, provided that the changes are not a “material alteration” and do not alter the “commercial impression” of the trademark. The ability to amend an existing trademark registration is highly desirable because it preserves the existing trademark registration along with all of its associated dates (i.e. filing date and registration date), its position and history within trademark search reports, along with any Trademark Trial Appeal Board filings and enforcement history. Amending a trademark registration is also typically less expensive than refiling for a brand new mark.

Not all changes to a trademark are permissible. Where the mark is completely different (even if the product is identical) the change from ELECTRASOL to FINISH would not be permissible. However, other changes could be permissible with the right arguments. For example, there are arguments in favor of allowing an existing trademark registration for VALLEY NATIONAL BANK to be amended to VALLEY.

It is important to note that if the existing trademark is still in use and its use will not be fully abandoned, then it should not be amended and a new trademark application/registration should co-exist with the existing registration. Amendment of a mark is desirable in cases where all use of the existing registration has ceased and is no longer supportable for purposes of maintenance. It is best used in situations where the only option for the existing registration is abandonment.

Examples of Permitted and Impermissible Amendments
For a word mark, examples of changes that the USPTO has previously permitted include addition or deletion of spacing or elements such as punctuation or words. For a design mark, changes that are often permitted include any alterations or updates to the design.

Examples of permissible alterations that we have successfully made include:

  • Modernizing minor stylistic changes to a design;
  • Removal of non-distinctive matter such as “THE” or “INC.”;
  • Amending from one word to two or vice versa;
  • Removal of quotation marks;
  • Shrinking elements in a mark;
  • Rearranging elements in the mark;
  • A black and white drawing to a color drawing;

Examples of impermissible alterations include:

  • Fixing obvious spelling errors
  • Adding or removing punctuation that affects the commercial impression of the mark

Costs of Amending and Risks

The official USPTO fee for filing an amendment is only $100. In many cases the associated arguments are short. There is not a large body of law on permissible changes to trademarks and it is not possible to search the USPTO record to determine if a trademark has been successfully amended. In many cases, amendments require creative arguments by an experienced trademark attorney. If the amendment is rejected, the underlying registration is simply unaffected, though the amendment submission will remain on the USPTO record. If the amendment is rejected, then a new trademark application can still be filed to cover the changes to the trademark. An amendment to a trademark registration may be filed at any time after the mark has been registered.

Amendments to Trademarks with a Madrid or Foreign Registration Basis

One caveat is that if the trademark is the extension of a Madrid International Registration, it cannot be amended, either in the U.S. Patent and Trademark Office (the extension itself) or at the World Intellectual Property Office (International Registrations may not be amended).

A trademark registered with a foreign registration basis has the requirement that it be a “substantially exact representation” of the mark as it appears on the foreign certificate of registration. However, this standard is strict and in most cases is unlikely to permit any but very insignificant and immaterial deviations from the existing registration word or design. It is notable that of the foreign jurisdictions where most businesses commonly file, only Australia allows some minor alterations of existing trademark registrations. Most other foreign jurisdictions require a refiling for any changes to a trademark to be recorded.