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.
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.
For questions call 1-877-256-2472 or contact us at [email protected]