You can sometimes amend a trademark registration issued by the United States Patent and Trademark Office (USPTO), just like you can sometimes amend a trademark application before it becomes a registration. All requests for amendment of a registration must be “for good cause,” which essentially means you need to have a legitimate reason for the amendment. In addition, a request to amend a trademark registration must be accompanied by the required government filing fee and be supported with the declaration language found in 37 C.F.R. § 2.20.
Why Would I Need to Amend a Trademark Registration?
Although there are many reasons why a trademark owner may need to amend a trademark registration, there are two situations which arise most frequently. The first situation occurs when it comes time for the trademark registration owner to file the Section 8 Declaration of Use, Section 71 Declaration of Use, or the Section 8 and 9 Renewal. Those documents require that you provide a current specimen showing use of the registered trademark in commerce. But what if you’ve changed your trademark such that the trademark displayed on the specimen no longer matches the trademark in your registration? If you submit the Section 8 Declaration, Section 71 Declaration, or the Section 8 and 9 Renewal with a specimen that doesn’t show the mark exactly as it’s registered, then those documents will be rejected and your trademark registration will be jeopardized. So, you would need to successfully amend the trademark registration prior to filing those documents.
The second situation occurs when a trademark cancellation has been filed against a registration and the parties agree to resolve the cancellation by having the owner amend its trademark registration in some manner. In this scenario, the petitioner usually agrees to withdraw the petition for cancellation once the amendment to the registration is approved.
What Types of Amendments are Allowable?
There are a number of allowable requests to amend a trademark registration. Some of the them include:
- A request that particular products or services be completely removed from the registration. Please note that products and services may never be added to the registration.
- A request that particular products or services be restricted or clarified (but not broadened)
- A request that the dates of first use be amended (with some restrictions)
- A request that a disclaimer be entered to disclaim a portion of the trademark (so long as the remaining portion of the trademark is still registrable)
However, the most common request to amend a trademark registration involves a change to the trademark itself. You may only request an amendment to the mark itself if the amendment “does not materially alter the character of the mark.” Generally speaking, an amendment of a registered mark is acceptable if the modified mark contains the essence of the registered mark and the modified mark creates essentially the same impression as the registered mark. In reality, this means that only very minor changes to the mark are ever allowable. As such, it’s probably a good idea to consult with a trademark attorney about the amendment you want to make before spending time and money requesting an amendment that may be doomed to fail.
How Do I Amend a Trademark Registration?
If your trademark registration is not the subject of a cancellation proceeding, then you can amend your trademark registration by filing a Section 7 Request for Amendment with the USPTO. The Section 7 is an online form that is available on the USPTO’s website. Basically, it requires you to describe with specificity the exact amendment you want to make. In addition, if the amendment consists of a change to the trademark itself, you will need to submit a current specimen showing use of the revised trademark in commerce. After you submit the Section 7, an examiner in the Post-Registration Section of the USPTO will review it for compliance with all applicable rules and regulations. If the Section 7 satisfies all legal requirements, then the amendment will be approved and your trademark registration will be updated. On the other hand, if the Section 7 is deficient in some manner, or it violates a particular USPTO rule or regulation, then you will receive a post-registration office action explaining why the Section 7 could not be accepted. If you don’t respond to the post-registration office action within six months, or your response doesn’t persuade the examiner to accept the Section 7, then the Section 7 will be abandoned and your trademark registration will not be amended.
Now, if your registration is currently the subject of a cancellation proceeding, then you may only amend your trademark registration by preparing and filing a Motion to Amend Registration with the Trademark Trial and Appeal Board (TTAB). The Motion to Amend must meet all of the same requirements as the Section 7 Request for Amendment. However, the TTAB will only grant a Motion to Amend if the petitioner in the cancellation proceeding gives its written consent to the amendment. In the event the Motion to Amend doesn’t include the petitioner’s written consent, or it doesn’t satisfy all other legal requirements, then the TTAB will deny the Motion to Amend and your trademark registration won’t be amended.
I Can Help Amend a Trademark Registration
I’m experienced US trademark attorney Morris Turek. If you need to amend your trademark registration and want to make sure it’s done correctly and in a timely fashion, please reach out to me at your earliest convenience. You can call me directly at (314) 749-4059, shoot me an email to firstname.lastname@example.org, or complete the contact form located below. I look forward to working with you.