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Written by : Herbert Waldock
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let's talk about whether or not a brand owner can change a trademark and shout out this question uh comes from tim carr on twitter and if you have topics you'd like to see covered in future videos or podcasts please tweet at me at tm for small biz and i'll try to get to as many of them as i can so brands often evolve over time and sometimes brand names or logos do change or evolve sometimes the changes are subtle like coke at one point was evolving into new coke um sometimes they're more dramatic when a brand shifts uh its name entirely or when two companies merge and uh exxon becomes exxon mobil for example so brand names do evolve over time but what i want to talk about now is trademark filings and whether or not the marks in those filings can change and the answer is generally no so when a trademark application has been filed at the uspto or registered at the uspto generally only very very small changes will be allowed if the change amounts to what's called a material alteration which means that in essence an examiner would have to do a new search to redetermine whether or not there's any conflicts if that change does amount to a material alteration a proposed change then it will not be allowed so the type of change that might be permitted would be to drop the word the or to change a space between two words to a hyphen something very small rather insignificant but generally adding or deleting a word or making any kind of other change to the mark is going to jeopardize the filing and require a new filing so when brands do undergo those more significant changes they will generally have to file a new trademark application to cover and make sure it's protected going forward with the proper new uh iteration of the brand there is one type of change that's very interesting that sometimes can be allowed and that is a change to the description of goods and services in a registration and that change is allowed if technology has brought about a change to make it so that the way a mark was used years ago is no longer the way it's used a great example of this is um records or phonographs which although now are trendy and back in style you know many music publishers no longer make records if they have a registration that covers records they may be allowed to update that registration to cover digital sound recordings or other forms of musical recordings that's also a good reminder just to think about how your goods and services are described to try to describe them in a way that hopefully won't go out of date and then uh the registrant won't have to worry about that issue so those are some of the ways that a trademark and a trademark registration can be changed and generally cannot be changed and again i want to thank tim uh for raising a very interesting question on twitter
Thanks for your comment Alfonso Bicker, have a nice day.
- Herbert Waldock, Staff Member
registration certificate please find enclose your trademark registration certificate for your trademark detailed above hey everyone thank you so much for clicking yet another video and welcome if you're new my name is teddy g and this channel is all about me taking you guys along for the journey with me as i build this cloning brand if you're new here please guys consider subscribing i upload videos twice weekly and i'm actually relatively consistent so please consider subscribing so i have a business mentor and when my mentor first came across my brand and its name the first thing he said to me was make sure you get that name and that logo trademarked and so i did and i did it successfully by myself no legal experience no experience in trademarking whatsoever i just went on the gov website and i did it myself and in this video i'm going to be talking to you guys about how i did that the process and all that kind of jazz so let's get into it so i trademarked my brand name and its logo using the gov website there's a whole host of things on that website it's a massive website and on there as well you can trademark and protect your intellectual property and it was a relatively simple process that i feel like anyone could do and for those of you that may not know what trademarking is it's basically a process that you can do in order to protect your intellectual property so you can protect the name of your brand you can protect your logos you can protect certain kinds of patents that sort of things so that's what trademarking is as a whole it cost me 170 pounds to do at the time which is pretty expensive especially when you're starting out but it's worth it in my opinion but i'm gonna touch on that later so the first thing i did when i wanted to actually trademark my brand name is i went onto the golf website and i searched to see whether there was any brands or companies out there that had a similar name especially in a similar class to the one that i was about to trademark in so on the golf website you can actually like see a whole database of all the different names and logos that have been registered for a trademark in the uk or have been attempted to be registered so when i made my search i searched over all the classes and a class is basically a description or scope of the goods or services that you're looking to trademark so for example class 25 is clothing so clothing headwear and footwear so when i did search over all the classes one trademark did actually come up and it did rattle me a little bit because i didn't understand why it came out because it didn't have anything similar to anything that i wanted to do and it was under the class of fitness and body cellulite and fitness gym or something along those lines and the company was actually based in france so this did rattle me a bit because i was thinking oh my gosh like why has this come up is the name similar i didn't quite understand but still i was like you know what i'm just gonna go ahead and do a bit more research and look into actually trademarking my brand name anyway despite the fact that something did actually come up the next thing i did was i got a little bit nosy so obviously i'm aware of a lot of different brands especially small brands from instagram from doing pop-ups and stuff like that and i actually went on there and i researched all those small brands to see whether they had actually trademarked their buy logo logo you know their band logo or their like brand name and quite a few that i knew came up and they had registered and all was scared and i was like oh my gosh so this is actually a thing that people do like i thought i was going in there just being you know like all like what i mean not knowing that this is actually a thing that most brands do but what then triggered my next line of research is when i researched one particular brand they had registered for a trademark but he had been rejected and i didn't even know like things like that could happen and i didn't know that on the database you will be able to see what trademarks have been rejected what trademarks have been submitted and withdrawn all of it stays on this public database so when i saw that that particular brand had been rejected it sparked me to do a bit more research into why trademarks get rejected because i was like i don't want to spend 170 pounds for my trademark to be rejected and i know that that 170 is non-refundable so that's the price of the application like once you make that application that money is gone it's gone i also wanted to make sure that what i was trademarking wasn't gonna potentially commit any of these offenses that might not let it qualify for trademarking so upon my research i'm gonna share with you guys some of the things that may potentially get a trademark rejected so obviously like the bait one would be if your trademark is too similar to another thing that's trademarked so that's the bait one obviously you can't trademark something that's already been trademarked you can't trademark something that isn't distinctive so it doesn't have a distinctive word it doesn't have a distinctive logo but i feel like this is a little bit ambiguous because what is distinctive so that is another reason why your trademark could get rejected and also you can't trademark something that would be in the best interest of the public to be able to use and i'm guessing this would be something along the lines of like you could trademark clothing for example because a lot of clothing brands call their clothing brand like the name of their brand and then clothing so then if you trademark clothing it means those people can't use clothing i believe that's what they mean by you can't trademark things that are in the best interest of the public to be able to use and also you can't trademark things that are too generic again really ambiguous but that's one of the things that came up when i done my research after i carried out that research i was pretty confident that my brand name and logo didn't commit any of these offenses so i did decide to proceed and go on so i know for a fact that if you're looking to trademark anything make sure you carry out as much research as possible especially if you're looking to do it yourself so once i was happy and i felt like i had enough information i went ahead and processed my application to register the name of my brand and two logos and i registered it under two classes so obviously the clothing class and i can't actually remember the other class i registered it under but you know it made sense to me why i registered it under another class as well so i completed the application in august of 2018 and typically it takes about four months or three to four months for them to review your application and in this time people can come along and like contest it so after going through that entire process my trademark was and the correct term is filed registered it was put on the register in november of 2018 so that was approximately three months so it took about three months for my trademark to be accepted and i've got this like thick thick like letter with al
Thanks Hyacinth your participation is very much appreciated
- Herbert Waldock
About the author
I've studied medical sociology at Tri-State Bible College in South Point and I am an expert in relativistic kinematics. I usually feel complacent. My previous job was air traffic controller I held this position for 27 years, I love talking about stamp collecting and yard games. Huge fan of Simon Helberg I practice wrestling: freestyle and collect prizes.
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