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Slight Brand Changes May Jeopardize Trademark Registrations

If you have a trademark registration and want to retain the early registration date as priority over possible competitors, be careful when modifying your brand so it does not diverge too much from the version as registered. A registered trademark needs to reflect how the owner is using the mark in commerce. If the new mark is a “material alteration” of the version as registered, then the owner can no longer support the registration with its usage. Slight font changes and other elements of form may be acceptable changes. Problems could occur if the logo has changed, or if a word or two is modified. Even punctuation changes could create a problem. If the version in use is sufficiently different from the registered version, an adversarial third party might try to cancel the registration. Similarly, when it is time to renew the registration, the owner may not be able to provide a specimen of use that the United States Patent and Trademark Office will accept, because the revised mark and the mark as used have diverged too much. When filing a renewal using a slightly different specimen of use from the mark as registered, the owner runs the risk that the PTO will deny the renewal, and the owner may not be able to find a specimen showing that it was using a matching version of the mark prior to the initial faulty filing. If you do materially alter your trademark, remember to apply for a new registration.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com