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[jandro]

Hello -- I have a trademark registration, which was opposed recently -- I reached a settlement with the opposer that I would have to amend the application, so that I stick to a particular form of the mark.  Does anyone know if I can do this without having to file a new application?  

Essentially, I would be narrowing the scope of the mark, so I am thinking there should be an easier way to do this...

[lyza2855]

Jandro,
Forgive me but your post does not make sense with the known rules and procedures of the USPTO.  Let me instead try to reconstruct your situation as I'm guessing it really is.

I am going to assume that the application to register your mark has not yet been approved for registration and has instead recently entered or passed through its publication period.  During that 30-day period, either an Extension to Oppose or a Notice of Opposition was filed, which put you in touch with the opposer or opposer's counsel.  You agreed to modify your application and now you want help to so amend.

In all honesty, I'm sorry you spoke with the opposer without benefit of counsel because with knowledgeable IP counsel on your side, you might have been able to stave off the opposition altogether and thereby avoid having to amend your application, or at the very least be required to amend your application minimally.  However, that is hindsight and you now need to understand how to amend your application.  Opposing counsel should have already indicated their demands and told you what they want you to do since you said you have already reached an agreement.

It will be difficult for an attorney to offer you advice here because they must know specifics in order to know how to advise you to amend.  I would strongly suggest that before you file anything further or have additional discussions with the opposer, you consult with an IP attorney to get a handle on your rights and what you should NOT do as well as what to do.  Good luck.

[JSonnabend]

As a general rule, you can amend the G&S to narrow its scope, but not to expand it.  If that's the nature of your agreement with the opposing party, you should be able to amend the present application and avoid filing a new one.

I'm an IP/TM attorney who routinely handles matters such as yours for smaller clients in an affordable manner.  I agree with Lyza that you very easily can be penny wise and pound foolish to forego competent legal counsel in such matters.

- Jeff