How to Update a Trademark

By John Cromwell

Registering a federal trademark allows a business to use certain words, names, symbols and logos exclusively as a means to identify its product. Once you have registered a trademark, it is yours for 10 years, and you can renew the trademark for additional 10-year terms. However, you only have exclusive rights to the mark as it is recorded – if your business decides to alter your trademark for any reason, such as marketing or for more aesthetic packaging, the registered trademark can be updated. This process is known as “amending.”

Registering a federal trademark allows a business to use certain words, names, symbols and logos exclusively as a means to identify its product. Once you have registered a trademark, it is yours for 10 years, and you can renew the trademark for additional 10-year terms. However, you only have exclusive rights to the mark as it is recorded – if your business decides to alter your trademark for any reason, such as marketing or for more aesthetic packaging, the registered trademark can be updated. This process is known as “amending.”

Step 1

Determine what information needs to be changed to update your trademark. If the changes materially alter the mark so it is significantly different from the original, you cannot amend the registration. Furthermore, any changes to the identification of goods associated to the mark cannot be made unless you decrease the number of goods. For example, if a company that manufactures cars, motorcycles and RVs wanted their trademark to also cover boats, the trademark could not be updated to reflect that change; however, it would be acceptable to amend the trademark if the company wanted the trademark to only cover cars and RVs.

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Step 2

Sketch a new drawing of the amended mark. This should be submitted with your amendment application.

Step 3

Provide a specimen, or sample, of your product using the new trademark. This will show the Patent & Trademark Office how you plan to use the new trademark.

Step 4

Draft, or have an attorney draft, a written request to amend your trademark. This document must specify what changes you want to make to your registered trademark.

Step 5

Prepare an affidavit declaring that the updated trademark has been in use for commercial purposes at least since the amendment’s filing date. The affidavit should include language such as the following: “The undersigned, being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.”

Step 6

Check to see if a disclaimer, description or other miscellaneous statement was attached to the original trademark. A disclaimer is a voluntary exception of trademark protection applied to a component of the specific logo because the component in question is unregistrable. Any supporting documents tied to the original trademark must also be amended so all paperwork reflects the new trademarked item.

Step 7

Sign the amendment. The amendment must be signed by the trademark’s owner, an agent with legal authority to bind the owner or a “verified practitioner,” which generally means an attorney that may represent a party before the Copyright and Trademark Office. You will also need to prepare an affidavit stating that the amendment represents the owner’s true wishes to amend the trademark. The affidavit must include the same language as used in the affidavit regarding the trademark’s use.

Step 8

Submit the amendment to the U.S. Patent & Trademark Office with the required fee. The filing fee for amending a trademark is $100 at the time of this writing.

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What Does "Date of First Use" Mean on a Trademark?

References

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