How to Update a Trademark

By Laura Payet

How to Update a Trademark

By Laura Payet

As a thorough and conscientious business owner, you've already registered your trademark with the U.S. Patent and Trademark Office (USPTO) because you know that federal registration provides the best protection for your mark. Federal registration gives you the exclusive right to use your trademark in association with your goods and services and puts the public and potential competitors on notice that you claim ownership of it.

Notebook with pencil drawings of the letter "r"

Once you have registered your mark, it is yours for 10 years and you can renew your registration for additional 10-year periods. But 10 years is a long time. What if you decide to make some changes to your mark? Your existing registration only protects your mark as recorded with the USPTO. If the changes you propose to make do not materially alter your mark's character, you can request an amendment to your registration.

Step 1. Decide what changes to make.

Consider what changes you plan to make to your trademark. An application to amend a trademark is called a Section 7 Request and is available only if your proposed changes do not materially alter your trademark so that it is significantly different from the original as registered. If your changes are significant, you must file a new trademark application.

Step 2. Sketch your amended trademark.

Prepare a drawing of your trademark as amended. You must submit this drawing as part of your request for an amendment.

Step 3. Prepare a sample of your new trademark.

Prepare a sample, also called a specimen, of your product showing how you will use your new trademark. You must provide one specimen for each class of products on which you use your mark with your amendment request. Note that you cannot use an amendment to expand the type of goods identified as associated with your trademark in your existing registration.

Step 4. Prepare a written request to amend.

Prepare a written request to amend your current registration. You can file the USPTO's Section 7 Request for Amendment or Correction of Registration Certificate online. The request must be verified and signed by the registration's owner, someone with the legal authority to bind the owner, or an attorney qualified to practice before the USPTO. You must include with your written request the requisite filing fee as well as an affidavit affirming that the updated mark has been in use in commerce at least as early as the filing date of the amendment.

Step 5. Wait for a response.

Once you have prepared and filed your request for an amendment, the USPTO examines your submissions to determine whether your proposed amendment is acceptable. The examiner may request additional information from you. If the examiner concludes that your proposed changes materially alter your trademark, he or she will, unfortunately, reject your petition. In that case, you must file a new registration application for your updated trademark. As with amending your trademark, you can apply for trademark registration on your own, with the help of an attorney, or with the help of an online legal service provider.

This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.