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Refresh Your Logo While Keeping Your Old U.S. Trademark Registration

We are tickled pink when we get to work with trademark registrations that issued before we were born. ‎(We won’t say when that was.) It’s nifty to be the steward of a trademark that has stood the test of time and that may endure long after we’ve headed off to the Great Principal Register in the Sky (no Supplemental Register for us, no sirree).

But what if your old, venerable logo is due for some sprucing up? ‎Please don’t immediately assume that a logo refresh means that you will need to start over with a new trademark application and allow your old logo registration to lapse. You may be able to amend your national U.S. trademark registration to cover the most current version of your logo, so long as the new logo isn’t a “material alteration” of the original registered logo. This allows you to preserve your original priority date that is associated with your old registration! (Note: this won’t work for registrations obtained in the USA via the Madrid Protocol. Sorry.)

So how do you know whether ‎the change in your logo amounts to an impermissible “material alteration”? We can usually eyeball the new and old logos side-by-side and predict with a fair degree of certainty how the Trademark Office will react—but in case you haven’t had the pleasure of reviewing innumerable logo updates like we have, below are a few examples, straight from the Trademark Office records.

The Trademark Office approved the amendment of the following marks:

1.  From  Aqua Stop Original Logo to  

2. From  to  (changing “GRAN VINO” to “VINO DE,” below the image of grapes at the top)

3. From  to 

If you are just rearranging the original logo elements, updating the lettering, and not adding or ‎subtracting any major word or design elements, why not try amending the registration to cover the new version of the logo? You’ll look like a champ when you preserve your early priority date, and you’ll avoid incurring the cost of a new application.

Keep in mind that this magic trick doesn’t tend to work in many places outside the USA. We have encountered precious few countries that allow you to amend any aspect of a registered mark—and some countries insist that the mark be used in the exact (and we mean EXACT!) form in which it was registered. If the changes are minor, though, sometimes we’re told that the old and new logos are “close enough” that it’s not strictly necessary to file a new application. Check with your favorite local lawyer before you try this!

© 2020 Faegre Drinker Biddle & Reath LLP. All Rights Reserved.National Law Review, Volume IX, Number 156

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About this Author

Jennifer Dean Intellectual Property Lawyer Drinker Biddle
Partner

Jennifer L. Dean assists clients with trademark clearance, registration and enforcement, with a focus on brand selection and management and litigation before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. She is vice chair of the firm's Intellectual Property Practice Group and the chair of Drinker Biddle's Trademarks Group.

Jennifer manages global trademark portfolios in fields ranging from soft drinks to reinsurance, and also advises clients on copyright and licensing issues. She assists...

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