Amending a Registered Trademark with a Section 7 Amendment: What You Need to Know

Once a trademark is registered with the United States Patent and Trademark Office (USPTO), the registration is not necessarily set in stone. Although the USPTO places a premium on the integrity and accuracy of the Principal Register, certain changes to a registered mark or its related information may be permissible. These changes are made through what is known as a Section 7 Amendment, named for Section 7 of the Trademark Act (15 U.S.C. §1057).

Understanding how and when a Section 7 Amendment may be used—and the potential risks that accompany it—is essential for any trademark owner.

What is a Section 7 Amendment?

A Section 7 Amendment allows the owner of a registered trademark to request certain changes to the registration. These amendments may include corrections of clerical errors, changes in ownership, and even some changes to the mark itself. That can include removing or adding letters or removing or adding designs.  Generally, removing is easier than adding, but not always.

Section 7(b) of the Trademark Act provides that a trademark registration is prima facie evidence of the validity of the mark, ownership by the registrant, and the exclusive right to use the mark in commerce. However, Section 7(d) provides a mechanism for amending the registration when changes are needed—so long as the changes do not materially alter the characteristic of the mark. You might need to change the mark if your marketing has evolved with time.

Types of Amendments Permitted Under Section 7

The USPTO permits a range of modifications under Section 7, including:

1. Correction of Clerical Errors – If a clerical error occurred in the certificate of registration due to a USPTO mistake, the Office will correct it without charge. If the error originated from the applicant, you may have to pay a fee.

2. Change in Ownership – Ownership changes due to an assignment, merger, or corporate name change can be recorded with the USPTO and reflected in the certificate. These are not substantive changes to the mark but are still critical for maintaining chain of title and enforcement rights. For substantively changing the ownership, you will still want to record a trademark assignment.

3. Changes in the Mark – This is where things get more complex. Section 7(e) states that no amendment to a registration will be permitted if it materially alters the character of the mark. This language means that while minor or non-material changes can be made, any change that alters the commercial impression of the mark is prohibited. Unfortunately, it is often difficult to predict whether the Office will consider a change to be material or not.

Examples of allowable changes might include:

• Removing a design element that is purely ornamental.
• Correcting a spelling mistake that doesn’t change pronunciation or meaning.
• Slight typographical changes in font or punctuation.
• Deleting a word that is insignificant and completely descriptive.

However, the Office will not allow usually allow:

• Changing the wording of the mark if you are adding substantive words.
• Altering a design such that the overall appearance is different.
• Adding or deleting elements that would affect how consumers perceive the mark.

I caution that the above are not certain, and even I sometimes get nervous about whether the Office will allow a change or not. Generally, you cannot ever be 100% certain that the Office will or will not allow a change.

The Amendment Process

File amendments under Section 7 through the Post Registration section of the USPTO’s online system.  This used to be TEAS but is moving over to Trademark Center.

Required Information:

• The specific nature of the amendment.
• A declaration that the amendment does not materially alter the mark.
• A specimen showing the mark as used with the amendment (if applicable).
• A filing fee, if the amendment is not due to USPTO error.

Once submitted, the USPTO examines the request. If approved, the Office updates its official record.  If refused, the USPTO will issue an action explaining the deficiencies or legal grounds for denial.

Risks Associated with Section 7 Amendments

Though Section 7 may offer a route to address changes after registration, it is not without hazards. Trademark owners must tread carefully to avoid unintended consequences.

1. Material Alteration Risk

The most significant risk is that the USPTO may find the proposed change to be a material alteration of the mark. If this happens, the amendment will be rejected. The owner cannot simply revise the registration; they would need to file a new application for the amended mark, starting from scratch.

This can be problematic for several reasons:

• A new application means a new filing date, potentially losing priority. It hurts to voluntarily give up a trademark that you have used for a long time ago.
• There is a risk of conflicting marks arising during the new examination. Although you would think that your first mark would be warding off applications filed on similar marks, but sometimes Examiners will let some applications through. If the Office approved a similar mark while your first mark was registered, that mark could actually be cited against your second filing.
• Costs and delays increase significantly. Filing an application has only gotten more expensive with time, and unfortunately, the trend for the past few years is that applications are taking longer for the Trademark Office to review.

2. Loss of Incontestability – If the trademark registration has achieved incontestable status (typically after five years of continuous use and the filing of a Section 15 declaration), a material change could undermine that status. Even small tweaks to a mark may reset the clock on incontestability, exposing the mark to more challenges.

3. Weakening of Common Law Rights – Inconsistent use of a mark between what is registered and what is actually used in commerce may weaken common law rights. If the mark in use differs too much from the registered mark, enforcement actions may be harder to sustain.

4. Unintended Admissions – The act of filing a Section 7 Amendment, especially if it involves a change to the mark itself, can be seen as an admission that the original mark is no longer in use or valid. This could affect litigation or opposition proceedings if third parties argue that the mark as registered is abandoned or not reflective of actual use.

5. Public Perception and Brand Consistency – Changing a mark post-registration, even slightly, can have branding consequences. If consumers perceive the amended mark differently, it could dilute the brand’s commercial impression and market position. This can affect both customer loyalty and legal enforceability.

Best Practices When Considering a Section 7 Amendment

To minimize risk and maximize success, trademark owners should adhere to several best practices.

1. Perform a Thorough Materiality Review – Before submitting an amendment, conduct a detailed comparison between the current registered mark and the proposed amended version. Ask:

• Does the change affect how the average consumer would perceive the mark?
• Would a third party believe this is a different source or brand?
• Are there any alterations to wording, design, or stylization that change the mark’s commercial impression?

2. Use Examples and Precedents – Refer to previous USPTO rulings and Trademark Trial and Appeal Board decisions to evaluate what has and hasn’t been allowed in the past. The USPTO’s TMEP (Trademark Manual of Examining Procedure) includes examples of acceptable and unacceptable amendments.

3. Keep Records of Use – When proposing a change to a mark, maintain extensive records showing that the amended version has been consistently used in commerce, and that consumers still associate it with the original source. This is particularly important if the change has been made gradually over time.

4. Consult Legal Counsel – Because of the subjective nature of what constitutes a material alteration, and the legal implications of getting it wrong, professional trademark counsel should be involved in every Section 7 Amendment involving a mark change. A trademark lawyer may also have strategies on when to present the Section 7 filing as it relates to other post-registration maintenance filings you may have to make.

Alternatives to Section 7 Amendments

In cases where the desired change is too extensive to be accepted under Section 7, consider alternative options:

1. File a New Application – While potentially less desirable, filing a new application for the revised mark ensures that the registration matches actual use. This may be the only viable route if the change alters the mark’s commercial impression.

2. Maintain Both Registrations – If the old version is still in use to some degree, consider keeping the original registration active while pursuing a new one. This dual-protection strategy can be effective during branding transitions.

3. Rebrand Strategically – Sometimes, it’s better to fully rebrand and start anew than to patch an outdated or problematic registration. A clean, comprehensive strategy may be more cost-effective and legally robust in the long term.

Conclusion

Section 7 Amendments offer trademark owners a valuable mechanism to make certain updates or corrections to a registered mark. But like any legal tool, they come with limits and risks. Understanding what kinds of changes are permissible—and how to approach them—is critical to preserving trademark rights and avoiding unintended legal consequences.

When in doubt, err on the side of caution: treat any proposed change to a registered mark with careful scrutiny. Not all changes are created equal, and in the world of trademarks, even minor differences can carry major implications.

Should you have any questions about Section 7 Amendments or post-registration trademark maintenance filings, please contact your local trademark attorney or Tom Galvani.