Be careful when updating your firm’s trademark

This loss is significant for any mark but especially those marks that have been used for a long time. Long periods of time usually equate to significant amounts of goodwill and early first use dates are powerful when enforcing trademark rights.

The U.S. Patent and Trademark Office prohibits any change that materially . The test for determining if a change is a material alteration is whether the trademark office would have to republish the mark after the alteration is made in order to fairly present the mark for purposes of opposition.

An opposition proceeding is how other trademark owners can object to the registration of a pending trademark. If the new mark with the .

In other words, the modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark. As a general rule, the addition of any element that would require the trademark office to conduct a new search of the U.S. Patent and Trademark Office database to determine if a likelihood of confusion exists will be considered a material alteration.

Likewise, the deletion of matter can also result in a material ices.

Abandon the old trademark?

The risk associated with modernizing a mark is the possibility of abandoning the old version of the mark.  Abandonment of a mark occurs when the trademark owner stops using the mark with no intent to resume use of the mark. If a trademark owner modernizes an old mark such that the new mark creates a commercial impression that is different from the old mark, the trademark owner may be deemed to have abandoned the old mark in favor of the new mark.  In this case, the trademark owner may lose the benefit of the earlier priority date held by the old mark and the goodwill embodied in the old mark.

Recently, there have been some well-known brands that have updated their looks, Chipotle Mexican Grill and Sunny Delight.

The changes to the Sunny Delight mark are significant because the full word “Delight” was deleted, which, generally, changes the commercial impression of the mark. On the other hand, the changes to the Chipotle Mexican Grill & Design mark simply modernize its look. There is no addition or deletion of elements; therefore, the commercial impression remains the same.

At this point, you may be wondering if it is possible to trulymodernize a trademark without jeopardizing your priority to use it, andthe goodwill embodied in it. While business owners must continuouslyuse their marks in commerce to retain their trademark rights, there isno requirement for how the trademark must be used other than that themark must be used in close proximity to the applied for goods. There isno requirement that the trademark be directly affixed to the goods inorder to function as a trademark for the goods. Therefore, to retaintrademark rights in the older version of the mark, business ownersshould continue to use the mark but in a de-emphasized way.

In fact, this appears to be the strategy that the Sunny DelightBeverages Co. is using.  Even though Sunny Delight Beverages changedits product labels to display Sunny D, the shipping boxes for its juicedrink continue to display Sunny Delight. Generally, placing the mark onthe shipping material for the goods is considered in close proximity ofthe goods.

Maintaining trademark rights

Another way to maintain trademark rights is to use the mark on adisplay associated with the goods. A display associated with the goodscan be almost anything from a sign placed near the goods to a Web sitepage.

Although a Web site is the most  convenient way to display a trademark,the site needs to meet certain requirements before it will be acceptedas proper trademark use.  In order for a Web site to qualify as adisplay associated with the goods, the Web site must contain: thetrademark, and ordering information or a link to the orderinginformation near the mark.

These examples not only demonstrate the consequences of modernizing amark, but also highlight the issues that must be considered beforemaking significant changes to a mark.

Thoughtful consideration must be given to the entire trademarkportfolio and not just the mark being considered for modernization.Once the changes are made, it’s hard to go back.

Bradley Walz,
Winthrop & Weinstine:
612.604.6725
bwalz@winthrop.com
www.winthrop.com