Trademark

[Conchobar]

Dear Mrs. Moore,

1. I know you have to use a trademark in order to maintain the protection. What happens if I use not the exact registered trademark but a slightly different one? Is it still a lawful proper use?

2. Is ist possible to change the registered trademark to the one I am using. It is not very different.

Thank you

ANSWER: Dear Bea,

1. Technically, no. However, depending on the change, maybe. I know this is so unclear but trademark law is all about the grey areas. Since this is a public forum, please feel free to email me the details at [email protected] Once I know the details I can point you in a more concrete direction.

2. The USPTO is very clear about this issue and the short answer is no. Applications cannot be changed once filed.

Hope that helps! I wish you much success & happiness in all your ventures!

Warmest regards,

Shannon Moorehttp://www.tmexpress.comhttp://tmexpress.blogspot.com

Twitter @TradeMarkExpres

---------- FOLLOW-UP ----------

Dear Shannon, thank you for your answer. I found the rule 37 C.F.R. §2.173. Doesn't it say that it is possible to change a registered trademark or what does it mean?

Thank you very much

B.

ANSWER: Dear Bea,

Yes, you are correct in that the USPTO does allow minor changes but this does not typically extend to changing the name itself. Here's some more info:

"Section 7(e) of the Trademark Act, 15 U.S.C. §1057(e), prohibits an amendment that materially alters the character of the mark. “Material alteration” is the standard for evaluating amendments to marks at all relevant stages of processing, both during examination of the application and after registration.

In determining whether a proposed amendment is a material alteration of a registered mark, the USPTO will always compare the proposed amendment to the mark as originally registered.

The general test of whether an alteration is material is whether, if the mark in an application for registration had been published, the change would require republication in order to present the mark fairly for purposes of opposition. If republication would be required, the amendment is a material alteration.

An amendment of a registered mark is acceptable if the modified mark contains the essence of the original mark(i.e., the mark as originally registered), and the mark as amended creates essentially the same impression as the original mark. Marks entirely comprised of words can sometimes be varied as to their style of lettering, size, and other elements of form without resulting in a material alteration of the mark."http://tess2.uspto.gov/tmdb/tmep/1600.htm#_T160902a -- Link to above

Hope that helps! I wish you much success & happiness in all your ventures!

Warmest regards,

Shannon Moorehttp://www.tmexpress.comhttp://tmexpress.blogspot.com

Twitter @TradeMarkExpres

---------- FOLLOW-UP ----------

I'm sorry, I would have another question:

I am about to register a new trademark. Isn't it better to register a black and white mark than a colored one? I think I can use the black and white mark in any color I want right?

Thank you!

[Milward]

Dear Bea,

You'll want to register however you're using it. If the colors are an important facet of the overall brand, you may want to consider filing it in color. If you want the freedom to change things around, then yes filing a black/white is likely better.

I'd be remiss if I didn't check with you to make sure that you've had comprehensive research PRIOR to filing. Prior to investing your time, money & effort into a name, it is strongly advised that comprehensive research be conducted to ensure that the name you're interested in is truly available. This entails searches of the pending & registered Federal and State trademark files as well as the US National Common-Law files. Hope that helps! I wish you much success & happiness in all your ventures!

Warmest regards,

Shannon Moorehttp://www.tmexpress.comhttp://tmexpress.blogspot.com

Twitter @TradeMarkExpres