Trademark Blog

How Do I Amend a Trademark Application?

amend a trademark application

What does it mean to amend a trademark application? Simply put, it means changing or altering the application in some manner after it’s filed. The way to amend a trademark application is by filing an amendment with the United States Patent and Trademark Office (USPTO). Oftentimes, there are no government fees associated with filing an amendment, but you could still waste a lot of time and effort requesting an amendment that violates the USPTO’s rules and regulations. So, it’s important to understand which kinds of amendments are allowable, when they can be filed, and how to properly file them with the USPTO.

What is Excusable Nonuse of a Trademark?

excusable nonuse

Excusable nonuse of a trademark occurs when circumstances beyond the control of a trademark owner causes a temporary interruption in the use of the mark. The concept of excusable nonuse most frequently arises when it comes time for the owner of a U.S. trademark registration to file the Section 8 Declaration of Use or the Section 71 Declaration of Use with the United States Patent and Trademark Office (USPTO). Normally, both of these declarations require verification that the registered trademark is in use in commerce in order to prevent the registration from being canceled.

Can You Amend a Trademark Registration?

amend a trademark registration

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.

What is the Section 8 and 9 Renewal for a Trademark?

section 8 and 9 renewal

The Section 8 and 9 Renewal is a combined document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining and renewing a trademark registration. The Section 8 and 9 Renewal is only applicable to trademarks that are registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration). If your trademark is registered with the USPTO under Section 66(a) (extension of protection through the Madrid Protocol), then you would instead (1) file a Section 71 Declaration of Use with the USPTO, and (2) renew your international registration directly with the World Intellectual Property Organization (WIPO).

What is a Post-Registration Office Action from the USPTO?

post-registration office action

The United States Patent and Trademark Office (USPTO) will issue a post-registration office action if you file a trademark registration renewal or maintenance document that doesn’t satisfy all of the legal requirements. Here’s a list of documents that could trigger an office action if filed incorrectly: