Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[tracedef]

We've applied for a trademark for a name (not real name), AcmeBikes. On our logo we've got a period between Acme and Bikes for so the logo / specimen reads "Acme.Bikes" . We did this for cosmetic reasons only to break up the look and feel of the logo and add some color. Legally and whenever written in text the company name is actually "AcmeBikes".

The period between Acme and Bikes has caused our TM application to be put on hold as specimen does not match our application. Is the only solution to redesign our logo so that no period appears between Acme and Bikes or is there another solution since our name is listed as AcmeBikes everywhere else on the site where the name is written in text like our contact page, copyright mark at bottom of each page, etc.

Any feedback is greatly appreciated, thank you!

[TheTrademarkCompany]

You should be able to add/delete a period between words in the actual mark as applied for with the USPTO so that it matches your specimen of use.  The standard in altering a trademark already applied for is whether the proposed change would constitute a material alteration of the mark as applied for.  There is really no good definition of what constitutes a material alteration of a mark but I know that what managing attorneys at the USPTO instruct their attorneys as to how to make the determination is whether the alteration would cause them to re-search (i.e., change their search strategy) for the mark at issue.

In the case of adding or deleting a period from your mark to match the specimen, if I understand this correctly, in my opinion that would not constitute a material alteration of the mark and they (USPTO) should let you do it.

Good luck and I hope this helps.

[tracedef]

Thank you for your help. In our case, we don't need to alter the trademark we've applied for, which is "AcmeBikes", as it is correct and is how we want it and how our name is used legally. 

The issue is that the specimen which we are submitting is a screenshot of our website, which contains our logo. The logo used on that website reads Acme.Bikes with a period between the words. So the specimen, which happens to be our logo is the issue.

We're wondering if we are going to be forced to change our logo so that it does not contain a period. Everything else (LLC, Bank Accounts, wording on website, etc.) except for the logo, reads AcmeBikes with no period. Hopefully this clarification helps.

[TheTrademarkCompany]

OK.  I understand.  Then you will need to show use of the mark in commerce without the "."  Ultimately the mark as applied for must match the specimen.  One needs to be changed to match the other.  If you want to keep the mark as applied for you will need to amend the use of the mark in commerce (i.e., the specimen).

Good luck.

[tracedef]

Thank you, it looks like we'll amend the logo. Thanks again!