The following is an edited transcript of my video, Can You Change a Trademark?
Brands often evolve over time, and sometimes brand names or logos change or evolve. Some changes are subtle – such as Coke at one point evolving (temporarily) into New Coke. Sometimes they’re more dramatic – when a brand shifts its name entirely, or when two companies merge, Exxon becoming ExxonMobil, for example.
But what about trademark filings, and whether or not the marks in those filings can change. The answer is generally no. When a trademark application has been filed or registered at the USPTO, generally only very, very small changes will be allowed. If the change amounts to what’s called a material alteration, which means in short that an examiner would have to do a new search to redetermine whether or not there are any conflicts, then it will not be allowed.
The type of change that might be permitted would be to drop the word ‘The’ or to change the space between two words to a hyphen—something very small and rather insignificant. But generally adding or deleting a word or making any kind of other change to the mark is going to jeopardize the filing and require a new filing. When brands do undergo those more significant changes, they generally have to file a new trademark application to make sure it’s protected going forward with the proper new iteration of the brand.
There is one type of change that’s very interesting and is sometimes allowed: a change to the description of goods and services in a registration which may be permitted if technology has evolved such that the way a mark was used years ago is no longer the way it’s used. A great example of this is records or phonographs, which although now are trendy and back in style, many music publishers no longer make records. If a music company has a registration that covers records, they may be allowed to update that registration to cover digital sound recordings or other forms of musical recordings if they no longer make records. That’s also a good reminder to think about how your goods and services are described, and to describe them in a way that hopefully won’t go out-of-date, and then register it.
Those are some of the ways that a trademark and a trademark registration can and cannot be changed.
