Amendment of Trademark - What info can I modify in a trademark?

Amendment of Trademark - What info can I modify in a trademark?

  • 10 June, 2024
  • Nyall Engfield

Once a trademark application is filed, certain information can be amended, while other details cannot be changed. Here is an overview of what can and cannot be amended, and how you can make those amendments:

Information That Can Be Amended

  1. Owner's Name and Address:

    • How: Submit a Voluntary Amendment (Form PTO-1597) or file a Change of Owner's Address form.
  2. Description of Goods and Services:

    • How: File a Voluntary Amendment (before publication) or a Post-Publication Amendment (after publication but before registration).
    • Note: You can only narrow the scope of the goods and services, not broaden them.
  3. Disclaimer of Unregistrable Components:

    • How: Submit a Voluntary Amendment or a Response to Office Action to add or amend disclaimers.
  4. Attorney Information:

    • How: Submit a Change Address or Representation Form to update the attorney of record or their contact information.
  5. Basis for Filing:

    • How: You can amend the filing basis from Section 1(a) (use in commerce) to Section 1(b) (intent to use) or vice versa, or from Section 44(e) (foreign registration) to Section 1(a) or 1(b). This is typically done through a Response to Office Action or Voluntary Amendment.
  6. Mark Drawing:

    • How: Minor changes that do not materially alter the mark can be requested via a Response to Office Action or a Voluntary Amendment.

Information That Cannot Be Amended

  1. Material Alteration of the Mark:

    • You cannot change the mark in a way that materially alters its overall commercial impression.
  2. Broadening of Goods and Services:

    • You cannot broaden the description of goods and services beyond what was originally filed.
  3. Filing Date:

    • You cannot change the filing date of the application.

Process for Amending Information

  1. Voluntary Amendment:

    • Filed before the application is published for opposition. Use the TEAS Voluntary Amendment form.
  2. Response to Office Action:

    • If the USPTO issues an Office Action (refusal or requirement), you can address the issues and make allowed amendments in your response.
  3. Post-Publication Amendment:

    • After the application has been published but before it has been registered, you can submit amendments using the TEAS Post-Publication Amendment form.
  4. Amendment after Registration:

    • For registered trademarks, you can file a Section 7 Request for Amendment or Correction to correct any mistakes or update information.

Steps to Amend Information

  1. Log in to the USPTO’s Trademark Electronic Application System (TEAS).
  2. Select the appropriate form (Voluntary Amendment, Response to Office Action, etc.).
  3. Complete the form with the necessary details and explanations for the amendment.
  4. Submit the form and pay any required fees.

Amending a trademark application is possible for specific elements, primarily aimed at refining or correcting information without altering the core of the trademark. For substantial changes, such as broadening goods/services or materially altering the mark, a new application is usually required. Always ensure that amendments comply with USPTO guidelines to avoid complications in the application process.

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