What happens when your trademark in use is different than the mark in your registration or application?

Does your mark in use match your applied-for or registered mark?

Trademark use and registration are two different issues. In an ideal world, your trademark in use should match your registered mark. Trademark use refers to the mark that is actually used in selling your goods or services. Such trademark usage may differ from the mark in your trademark application or registration. The risk is higher when the mark in your application or a registration is a design mark containing specific stylistic features. The problem arises when you need to show usage of your trademark in order to support your trademark application or renew your registration.

While there is no law against using a trademark that is different from the mark applied for, such usage might not support your trademark filing when there is a mismatch.

Showing use of trademark exactly as filed

An applicant must eventually submit to the USPTO evidence that the applied-for mark is being used in commerce on the goods and/or services identified in the application. These specimens of use showing the mark used in connection with the products or services must exactly match the mark as applied for. Failure to do so will generally lead to an abandonment of the application unless the mark as used is not materially different from the mark as applied for.

The same principle applies in maintaining trademark registrations. When renewing a registration, you must submit evidence of use where the mark matches the registered trademark.

Can you amend a mark in a trademark application or registration?

If there is a discrepancy between the mark as applied for and the mark as used, you may request to amend the mark in your trademark filing. However, the USPTO will only amendments to the mark, or drawing, if the alterations are immaterial. The same principles apply in maintaining or renewing a registered trademark.

How to reduce risk of discrepancy between trademark use and registration

One way to reduce the risk of a mismatch between trademark use and registration is to apply for a word mark. A trademark application for a word mark would cover any use without regard to design or stylization. So a word mark trademark application gives the applicant more flexibility to use different versions of the mark. You need to make sure the spelling is the same and that no other terms are included with the mark in use.

A design mark application, on the other hand, requires that that used mark matches the stylized mark exactly as applied for. If colors are included in the design mark, the colors used in the mark

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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