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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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com