Legal Definitions - trademark-application amendment

A trademark-application amendment refers to any proposed change or modification made to an existing trademark registration or to an application that is currently pending with the trademark office (such as the U.S. Patent and Trademark Office, or USPTO).

These amendments are necessary for various reasons, such as updating information, reflecting how a mark is actually being used, or adjusting the scope of protection sought. There are several common types of trademark amendments:

• Amendment of Registration

  This type of amendment involves making minor changes to a trademark that has already been officially registered. These changes are typically made to ensure the registered mark accurately reflects how it is currently being used in the marketplace. The key requirement is that the amendment must not fundamentally alter the overall character or impression of the original mark.

  • Example 1: A popular coffee shop, "Daily Grind," registered its logo with a specific font and a brown coffee bean icon. Over time, they slightly updated their branding, changing the font to a more modern sans-serif style and making the coffee bean icon a darker shade of brown. They would file an amendment of registration to update their official trademark record to reflect these minor design changes, ensuring the registration matches their current usage without changing the core "Daily Grind" logo.

    Explanation: This illustrates an amendment of registration because the core mark ("Daily Grind" logo) remains the same, but minor visual elements (font, color shade) are updated to match current commercial use, without materially altering the mark's identity.

  • Example 2: A clothing brand, "Urban Threads," initially registered its name in all capital letters. However, for marketing and aesthetic reasons, they consistently began presenting their brand name as "Urban threads" (with a lowercase 't'). They would file an amendment of registration to update the textual representation of their mark to reflect this consistent usage, as it's a minor change that doesn't alter the brand's core identity.

    Explanation: This shows an amendment of registration where a textual detail (capitalization) is updated to align the registered mark with its actual, consistent use in commerce, without changing the fundamental brand name.

• Amendment to Allege Use (AAU)

  An AAU is filed when an applicant initially sought trademark registration based on an "intent-to-use" the mark. This means they had a genuine plan to use the mark in commerce but hadn't started using it yet when they filed their application. Once the mark is actually being used in connection with the goods or services described in the application, the applicant must file an AAU to inform the trademark office of this commercial use.

  • Example 1: A software company filed an intent-to-use application for the name "QuantumFlow" for its upcoming project management software. Six months later, after developing and launching the software, making it available for download and subscription, the company would file an AAU. This filing would provide evidence (like screenshots of the app, invoices, or website links) demonstrating that "QuantumFlow" is now actively being used in commerce for project management software.

    Explanation: This is an AAU because the company initially applied based on future intent, and once the software was launched and commercially available, they filed this amendment to prove actual use, a requirement for final registration.

  • Example 2: A new snack food company applied for a trademark for "Crunchy Clouds" for a unique puffed potato snack, filing an intent-to-use application before mass production began. Once the product was manufactured, packaged, and distributed to grocery stores for sale, the company would submit an AAU. This amendment would include specimens like product packaging showing the "Crunchy Clouds" mark in use on the actual snack bags.

    Explanation: This illustrates an AAU where a company that applied with an intent to use a mark for a food product now files the amendment to show that the product is being sold and the mark is actively used in commerce.

• Amendment to Different Register

  This amendment occurs when an applicant initially seeks registration on the Principal Register but then amends their application to request registration on the Supplemental Register instead. The Principal Register is for marks that are inherently distinctive or have acquired distinctiveness, offering the strongest protection. The Supplemental Register is for marks that are descriptive but capable of acquiring distinctiveness over time, offering some limited protection while the mark develops stronger recognition.

  • Example 1: A company applied to register the slogan "The Freshest Produce" for its grocery delivery service on the Principal Register. The trademark examiner rejected the application, stating the slogan was too descriptive and lacked distinctiveness. In response, the company could file an amendment to different register, requesting that "The Freshest Produce" be placed on the Supplemental Register, hoping to gain some protection while they continue to use and promote the slogan to build distinctiveness.

    Explanation: This is an amendment to different register because the applicant, facing rejection on the Principal Register due to descriptiveness, changes their strategy to seek registration on the Supplemental Register, which accommodates such marks.

  • Example 2: A startup developed a unique, brightly colored packaging design for its line of organic baby food and initially applied for it on the Principal Register. The USPTO examiner determined that while the design was unique, it wasn't yet recognized by consumers as a source indicator (i.e., it hadn't acquired distinctiveness). The startup might then amend its application to the Supplemental Register, allowing them to register the design and gain some legal standing while they continue to market and build brand recognition for their packaging.

    Explanation: This demonstrates an amendment to different register where a mark (packaging design) that isn't yet considered distinctive enough for the Principal Register is shifted to the Supplemental Register to secure some level of protection.