You loved your trademark design when it was first created. You painstakingly developed its association with your brand to be sure the public could identify your company's products at a glance and successfully applied for federal registration. But now, time has gone by, and your mark just isn't looking as fresh as it once did. It's dated and needs rejuvenation. Maybe you want it to appeal to a whole new class of consumers. You decide to make some changes.
Many businesses change their trademark designs from time to time for a variety of reasons. But before you invest money in changing yours, here are some things to keep in mind.
Keep Using Your Existing Mark
First, decide what you want to do with your existing trademark design. If it is attached to goods rather than services, assess how much inventory you have remaining with your existing mark on it. Do you want to rebrand what you already have and use the new mark immediately, or would it be better to phase out your existing mark by using it up and then transitioning to the new one?
If you plan to keep using your existing mark, you need to file a new application with the U.S. Patent and Trademark Office (USPTO) for the changed design to ensure protection for both old and new designs. If not, however, you may be able to amend your existing registration to cover the new one.
File a New Trademark Application
If you don't intend to keep using your existing trademark design, you may be able to request an amendment to your existing registration. But you can only do so if the new design does not materially alter your old one. This might occur if it creates a different commercial impression. In this case, you need to file an entirely new application.
Similarly, if you intend to keep using your old mark and submit a new application to protect the new version, you cannot amend your old registration to expand your mark's use to different goods or services. Rather, you must file a new application specifying the additional goods or services on which you will use your mark. If you have to file a new application, you need to conduct a new search to be sure your proposed new design isn't already in use.
File an Intent-to-Use Application
If you plan to transition to your new mark sometime in the future, you may wish to file an intent-to-use application. The USPTO permits you to file a trademark application on an intent-to-use basis to protect a mark not yet in use so long as you have a good faith intention to use it in the future.
The advantage of filing an application on an intent-to-use basis is that you may get an earlier application filing date than a possible competitor, even if you have not yet used the trademark in commerce. This would give your mark priority over someone else's if a legal conflict ever develops. If you choose to go this route, you must remember that the USPTO will not actually issue protection for your new design until you submit evidence of its actual use in commerce and pay additional fees within certain filing deadlines.
If you have licensed your existing trademark to third parties and do not plan to continue using it, you should revoke those licenses. You may want to execute new licenses for your new design if you want to permit third parties to use it.
If you are ready to register your design, you can conduct a comprehensive trademark search, prepare an application under the guidance of an experienced attorney, and even develop a design patent application for your product's unique design.
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