Choosing the right goods and services is one of the most important parts of filing a trademark application. All applicants should be positive that they have included all relevant goods and services for any products that will use the trademark. If an error has been made in this portion of the application, you may be wondering, “can I change the goods and services listed in my trademark application?” While you cannot make blanket changes to the goods and services after applying for a trademark, limited options are available for correcting the error. At War IP Law, PLLC, our team of dedicated intellectual property lawyers helps our clients with trademark issues and all other intellectual property (IP) matters: contact us today at (202) 800-3754 for more information.
Can I Make Changes to My Trademark Application?
Certain portions of a trademark application may be updated after an examining attorney from the United States Patent and Trademark Office (USPTO) has approved the trademark and before the trademark has officially been registered. Applications filed based on intent to use can be changed until the USPTO issues a Notice of Allowance. All other types of applications have a limited period for requesting minor changes.
Applicants are generally only permitted to make certain types of minor changes, including:
- Permitted goods and services changes – The USPTO only allows applicants to delete, restrict, or limit the goods and services included in the original application. Applicants may not add goods or services or expand the breadth of the existing goods and services.
- Immaterial changes – When changes are made, the amended trademark must generally have an equal impression compared to the original mark. The USPTO prohibits material alterations, which it defines as a significant change that causes the new trademark to differ substantially from the trademark of the original application.
- Disclaimers – The USPTO allows disclaimers, which state that the trademark owner does not claim exclusive rights to a portion of the trademark.
Can You Add Goods and Services to an Existing Application?
No, you cannot add goods and services to an existing trademark application once it has been filed. However, this is not a problem for most applicants. Protecting intellectual property is a continuous process. It is extremely common for businesses to file subsequent trademark applications as the business grows and begins to offer additional goods and services that were not part of the company’s scope at the time of the first trademark application. A separate, more comprehensive trademark application with updated goods and services classes can replace the original.
Since existing trademark applications cannot be changed to incorporate additional goods and services, applicants should be extremely careful to include all relevant goods and services for their business. Mistakes during the trademark application process could result in a rejected application or insufficient protections for the intellectual property of the business. Many applicants turn to intellectual property lawyers for legal guidance, as this can help ensure that the application is accurate with all necessary goods and services. You can learn more about questions like “how to change the goods and services in my trademark application” by contacting the team of experienced trademark lawyers at War IP Law, PLLC.
What Trademark Application Errors Are Correctable?
The USPTO has outlined several types of correctable errors in the Trademark Manual of Examining Procedure (TMEP), such as:
- Applicants that identify themselves by a name they do business under can change to their correct legal name if the name on the application is not a legal entity.
- If an operating division of the company was mistakenly named as the applicant, this can be changed since operating divisions are not legal entities.
- Minor clerical errors may be corrected, such as forgetting to include “The” in the name of a company. Changing a major section of the applicant’s name is not considered a minor clerical error.
- Inconsistencies regarding the owner’s name or entity can be corrected, such as an individual being listed as the trademark owner in one part of the application and a corporation in another.
- Trademark owners who have legally changed their names before applying can correct an application if they accidentally listed their former name.
What Are Non-Fixable Mistakes In Trademark Applications?
The USPTO coincides the following trademark application mistakes to be non-fixable:
- Wrong owner – The application must include the legal name and entity type of the trademark owner. For example, a partnership business must include all partners who own the company. Failing to include one or more of these parties will require filing a new application.
- Incorrect goods or services – The trademark applicant must specify all goods or services that they use or intend to use with the trademark application. Mistakes in this section will often lead to a rejected application.
- Conflicts with existing trademarks – If the USPTO decides that the applied-for trademark is likely to be confused with an existing trademark (or another applied-for trademark), it will be rejected. The applicant can either convince the examiner that there is no likelihood of confusion or a new application will need to be filed after altering the trademark to be sufficiently unique.
- Generic trademarks – The USPTO does not allow trademarks to include generic, words or phrases that describe the goods or services offered under the trademark.
- Commonly used phrases – Trademarks are supposed to indicate the source of goods and services, which a commonly used phrase does not do.
How Do You Correct an Error In a Trademark Application?
If you have made fixable errors on your trademark application, you can often correct these errors using online forms from the USPTO:
- If the error is found before the application has been assigned to an examining attorney, the applicant will need to submit a form called Voluntary Amendment Not in Response to USPTO Office Action/Letter.
- Errors found after an examining attorney has issued an office action usually require a form called Response to Examining Attorney Office Action.
- Errors discovered after the trademark has been published in the Trademark Official Gazette (TMOG) can be corrected through the form Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment.
- If the error was found after the trademark was registered, submit a form called Section 7 Request for Amendment or Correction of Registration Certificate.
Learn More From Our Intellectual Property Lawyers
At War IP Law, PLLC, our dedicated intellectual property attorneys take pride in helping our clients with a variety of IP matters, including trademarks. If you are wondering “how to change the goods and services listed in my trademark application”, contact us today at (202) 800-3754 to learn more about your options for correcting the mistake.
