Like real property, from time to time a trademark may need updating. However, unlike real property, modernizing a trademark can result in the abandonment of the property; namely, the old mark. This loss is significant for any mark but especially those marks that have been used for a long time. Long periods of time usually equate to significant amounts of goodwill and early first use dates are powerful when enforcing trademark rights.

The Trademark Office prohibits any change that materially alters a mark as it appears on the drawing submitted with a trademark application. The test for determining if a change is a material alteration is whether the Trademark Office would have to republish the mark after the alteration is made in order to fairly present the mark for purposes of opposition. An opposition proceeding is how other trademark owners can object to the registration of a pending trademark. If the new mark with the alteration is sufficiently different from the drawing of the mark originally submitted with the trademark application to require republication, it would be tantamount to a new mark appropriate for a new trademark application.

In other words, the modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark. As a general rule, the addition of any element that would require the Trademark Office to conduct a new search of the United States Patent and Trademark Office database to determine if a likelihood of confusion exists will be considered a material alteration. Likewise, the deletion of matter can also result in a material alteration if the deleted matter is distinctive. If the deleted matter is nondistinctive, then it may not be considered a material alteration. Matter is distinctive if it is capable of indicating the source of goods or services.

The risk associated with modernizing a mark is the possibility of abandoning the old version of the mark. Abandonment of a mark occurs with the trademark owner stops using the mark with no intent to resume use of the mark. If a trademark owner modernizes an old mark such that the new mark creates a commercial impression that is different from the old mark, the trademark owner may be deemed to have abandoned the old mark in favor of the new mark. In this case, the trademark owner may lose the benefit of the earlier priority date held by the old mark and the goodwill embodied in the old mark.

Recently, there have been some well-known brands that have updated their looks. For example, the following changes have occurred to some well-known brands:

Some of these updates change the overall commercial impression of the marks. The changes to the SUNNY DELIGHT & Design, WGN AMERICA TV YOU CAN’T IGNORE & Design, and THE PHILADELPHIA ORCHESTRA & Design marks are significant. In each mark, some matter was either deleted or added, which, generally, changes the commercial impression of the mark. These marks appear to present the risk of being abandoned, which results in the loss of all the goodwill embodied in these marks.

On the other hand, the changes to the CHIPOTLE MEXICAN GRILL & Design mark simply modernize its look. There is no addition or deletion of elements. Accordingly, the changes to the CHIPOTLE MEXICAN GRILL & Design mark do not appear to present a risk of losing the goodwill embodied in the old version of the mark. Although consumer trends and preferences may demand changes to a mark, the decision to make significant changes must be thoughtful.

Indeed, the Sunny Delight Beverages Co. (“Sunny Delight Beverages”) is the record owner of the federal registration for the SUNNY DELIGHT & Design mark shown above for “[f]ruit juice drinks containing water” (U.S. Reg. No. 2566234). On February 7, 2009, Sunny Delight Beverages allowed U.S. Reg. No. 2566234 to be cancelled. The ground for cancellation was the failure to file the required Section 8 Affidavit. The Section 8 Affidavit is an affidavit attesting to the continuous use of the mark in commerce and must be filed within the first six years after the registration date and then every 10 years after the registration date. Sunny Delight Beverages’ failure to file this required affidavit indicates that it believes the new SUNNY D & Design mark creates a commercial impression that is different from the SUNNY DELIGHT & Design mark.

Sunny Delight Beverages enjoyed a priority date of March 27, 2000 for its SUNNY DELIGHT & Design mark and claims that this mark has been used in commerce since June 2000 (over eight and a half years before the cancellation date). By allowing its registration to be cancelled, Sunny Delight Beverages lost its priority date and may have lost the over eight and half years of goodwill embodied in the mark if it had no intent to resume use of the mark on about February 7, 2009, which we just don’t know. These losses are significant, but Sunny Delight Beverages may have also jeopardized another federal registration.

Sunny Delight Beverages is also the record owner of the federal registration for the SUNNY DELIGHT mark in block letter form for “fruit juice drink containing water” (U.S. Registration No. 1916700) and claims that this mark has been used in commerce since at least as early as December 22, 1983. If Sunny Delight Beverages is changing its mark from SUNNY DELIGHT to SUNNY D for its fruit juice drink, then it runs the risk of losing the federal registration for SUNNY DELIGHT in block letter form and the over 25 years of goodwill embodied in the mark.

It appears that Sunny Delight Beverages is trying to prevent this from occurring by using SUNNY DELIGHT on the boxes that ship the now branded SUNNY D fruit juice drink. A trademark does not have to