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Correction – Let’s Amend This Trademark: Part Five of Our Trademark Series

12/5/2016

In our previous four articles (article 1, 2, 3 and 4) in our trademark series, we discussed mandatory and optional filings for maintaining and protecting your marks, in order to avoid abandonment or cancellation.  The final segment of our trademark maintenance series provides guidance on corrections and amendments to trademark registrations.
 
Trademark owners are well advised to report any mistakes in the certificate of registration promptly to the United States Patent and Trademark Office (“USPTO”). The USPTO will issue a certificate of correction or a new registration certificate for a fee if the error is due to a good faith mistake and does not require republication due to a material change.  If the error is the USPTO's fault, the correction will be made for free.

A USPTO error needing a material change to the registration to correct it may require the registration to be cancelled as it was inadvertently issued and republished.  The USPTO will not, however, correct an applicant error that requires a material change to the registration.
 
Amendments to a trademark registration can be obtained for a fee if the amendment does not materially alter the mark. A trademark owner may choose to add a geographic limitation to the registration as a result of a settlement agreement, or delete certain goods and services for which the mark is no longer in use.  A trademark owner may also make slight alterations to the mark itself. These alterations could include minor changes to the style, size, or other form; or to delete generic material. However, any expansion of the scope of the protection or change in the commercial impression of the mark represents a material alteration that would require a new application.
 
To decide whether a proposed amendment materially alters a registered mark, the USPTO compares the proposed amendment to the originally registered mark. If the change will require republication to present the mark fairly for opposition purposes, the amendment constitutes a material alteration. An amendment generally is acceptable if the modified mark contains the essence of the original mark and creates essentially the same impression.
 
If you have any questions about trademark or patents, please feel free to contact us.

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Michael J. Basile / Responsible Attorney
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