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[Dawn LaPolla]

Hi,
I am working with an organization to design their website and they are looking at possibly having me re-design their logo. Problem is, they just got a Trademark and they don't want to have to pay another couple grand to re-Trademark.  The logo is essentially 3 letters and the name of the company, for example: ABC All Boys Club.  It's nothing special and has no significant or special design elements that make it stand out necessarily.  My understanding is that they could have sumitted the logo in 2 formats Standard Character or Stylized and I have yet to get a difinitive answer from their attorney as to which format it was submitted under.  Can anyone tell me if a completely new Trademark will be necessary?  The new design will consist of the exact same elements, (letters and the words) just different fonts and colors and maybe a graphic element to make it more of a brand - more unique.  Right now it's very boring and looks like something from the 70s.

Thanks a bunch!
Dawn

[lyza2855]

Substantive design changes require refiling a new application.  Linguistically, you don't trademark or re-trademark a brand, you register it or file an application seeking an additional registration.  The logo is the mark.  

[JSonnabend]

Substantive design changes require refiling a new application.

Maybe.  Depends on what the original registration covered and what registration strategy the tm owner was pursuing.

The logo is the mark.

Not to split hairs, but the logo is a mark.  In the case of composite marks, there may be several distinctly registerable "marks" (as in the case of a logo comprising in part a word mark).  For cost sensitive tm owners, this is an important distinction.

- Jeff

[lyza2855]

Hi Jeff,

So are you saying that a substantial change in the design would still allow amendment of the mark in a registration?  That would be news to me.  For an amendment to a registered mark, you must file a Section 7 amendment but the criteria of non-material alteration remains the same as in an amendment to an application,
TMEP Sec. 1505.01(c) "...  if ... the amendment is not a material alteration of the mark, and the specimen of record or foreign registration (if applicable) supports use of the mark as amended, the Office will approve the amendment and will not republish the mark.  If the applicant proposes to amend the mark and the amendment represents a material alteration to the mark, the Office will not approve the amendment."

From the way he described the design changes to include an additional design, "and maybe a graphic element to make it more of a brand - more unique", that would seem to me to be a material alteration, requiring a new filing, no matter the goods or filing strategy.  Help me here if that is not the case.  Thanks.

Lyza

[JSonnabend]

So are you saying that a substantial change in the design would still allow amendment of the mark in a registration?

No, I'm saying that depending on what the mark in the applicaiton/registration actually is and what registration strategy the tm owner is pursuing, the original application/registration may provide adequate protection for the new mark (provided that were not talking tm "mutilation" -- a phrase I still can't get used to).  For example, if an owner has applied/registered a word mark and switches from one word mark dominated logo to another, there may be no reason to re-file.  Same may be true in regards to changes to "font and color", as the OP indicated.  

Of course, the devil, as always, is in the details.

- Jeff