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The Intellectual Property StrategistFeaturesIntellectual PropertyLitigationRegulationTrademarks

Deciphering the USPTO's Material Alteration Standard for Amending Marks

By Chris Bussert
October 01, 2020

As brands mature over time, their owners often seek to update marks that are subject to a federal registration or registration application. In some cases, the impetus for the amendment may be deliberately to freshen, tweak, or otherwise modernize the subject mark. In other cases, brand owners may recognize after the fact that their current usage of a mark does not match the mark as originally registered or applied for.

The decision regarding whether to seek to amend the form of a mark goes well beyond just aesthetics, as there are two important legal considerations, particularly as to existing registrations. They are whether the amended mark will be deemed as abandoning the original form of the mark and whether the changes made will prevent the brand owner from tracing priority back to the original mark's date of first use and, in the case of a federally registered mark, its nationwide priority date. The latter consideration is also known as "tacking" and in contentious matters a decision on whether tacking is available will often control priority of rights between the brand owner and a challenger. See, Hana Fin., Inc. v. Hana Bank, 574 U.S. 418 (2015). When properly executed, some brand owners have many times successfully amended the same registration over the years with priority in the originally registered mark dating back a century or more.

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