General Motors and Kia motors both have announced updates to their logos. Logo modernization and evolution of a brand is natural over time. When logos are registered trademarks, however, it is important to consider how modernization might impact trademark rights.
Specifically, changes to a registered logo that are considered a “material alteration” could prevent renewal of an existing trademark registration. Whether a change is a material alteration largely depends on the subjective opinion of a trademark examiner and thus this risk should be weighed before going public with the change.
Trademark Office Rules
During a renewal, the Trademark office requires an affidavit stating that the mark is still in use and an example of the current use, referred to as a specimen, as part of the affidavit. If the mark is not in use, the office will refuse renewal and cancel the trademark registration. When the use has changed, i.e. the example of use no longer matches the logo that is registered, the office reviews the current use to see if it still supports the existing registration.
In particular, to support renewal the current use must be essentially the same as the mark that appears in the registration. When the specimen reflects a change in the mark since the registration issued, acceptance of the affidavit or declaration will depend on the degree of change. A material alteration of the mark will result in refusal of the affidavit or declaration on the ground that the registered mark is no longer in use.
The office specifically mentions that modernization is not ordinarily considered to be a material change, but each case is reviewed on its own merit. Consequently, the question of whether a change is material typically falls to the subjective review of the trademark examiner.
Weighing the Risks
Given this uncertainty, when considering modernization of a mark, the trademark filing strategy may be adjusted based on the perceived level of risk. Other factors may include costs and treatment in foreign countries.
In a higher risk scenario, i.e. where the logos look distinct or there are a number changes, the risk that the mark would not be renewed based on the modern logo may be at least partially offset by filing a new application to cover it. To that end, a belt and suspenders approach would dictate filing a new application for the modern version of the logo as well as renewal of the existing registration using the modern logo as the specimen. Continuing to push for renewal based on the new use is important to avoid an argument that the old mark is being abandoned. Cost and foreign treatment may way into this decision if the new application would also need to be filed in a large number of countries. If the cost of maintaining both marks is prohibitive, it is possible to pursue a trademark registration for the new logo and allow the registrations for the old logo to go abandoned as their renewals come due.
Renewing the old logo registration base on new use without a new trademark filing costs less. Therefore, if the modernization is relatively minor, this reduced risk may justify not filing a new application. Minor styling changes or slight changes in the font or punctuation suggest that there is less risk that the examiner would refuse the use of the new logo to support the registration. The trademark office decisions suggest that these types of changes are not material alterations and provide examples of material alterations for additional guidance. Therefore, in a very low risk situation, one might consider just attempting the renewal without a new trademark filing.
Kia and GM have demonstrated both approaches. Visually the new Kia mark is very different than its prior registrations. They removed the oval outline and drastically changed the font of the letters. In contrast, the changes to the GM mark are more subtle. The changed from capital letters to lower case, underlined only the m, and went from a solid blue block to a blue outline. Visually it looks more modern without dramatically departing from its prior mark. Based on the amount of change, Kia’s mark appears to create greater risk that an examiner would find it a material alteration than GM’s changes.
The approaches taken by each auto manufacturer reflect this risk. Kia chose to file a new trademark application for its new mark. This application refers to its earlier registrations as related properties to connect the new mark within the chain of registrations. Kia’s current registration is not due for renewal until 2029. At that time, it will have the option to attempt a renewal based on the new logo or simply cancel that registration in favor of its new registration.
GM, on the other hand, has not filed a new trademark application. Its next renewal for the GM logo is not due until 2028. At this time, GM will have to support the renewal with the new logo.
Conclusion
Overall, while it is common to modernize logos over time, these changes should not be made without considering the impact on trademark rights. As highlighted, failing to account for the risks can result in a loss of important trademark registrations. Taking the time to consider the degree of change, the number of registrations and countries affected, and the potential costs should provide a clear path to a successful trademark modernization strategy that also ensures adequate trademark protection.