T.M.E.P. § 1215.08
Material Alteration

Executive summary:

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1215.08 Material Alteration

Amendments may not be made to the drawing of the mark if the character of the mark is materially altered. 37 C.F.R. 2.72. In determining whether an amendment is a material alteration, the controlling question is always whether the new and old forms of the mark create essentially the same commercial impression. See TMEP §§807.14 et seq.

1215.08(a) Adding or Deleting TLDs in Domain Name Marks

Generally, an applicant may add or delete a TLD to/from the drawing of a domain name mark (e.g., COOPER amended to COPPER.COM, or COOPER.COM amended to COOPER) without materially altering the mark. A mark that includes a TLD will be perceived by the public as a domain name, while a mark without a TLD will not. However, the public recognizes that a TLD is a universally used part of an Internet address. As a result, the essence of a domain name mark is created by the second level domain name, not the TLD. The commercial impression created by the second-level domain name usually remains the same whether the TLD is present or not.

Example: Amending a mark from PETER to PETER.COM would not materially change the mark because the essence of both marks is still PETER, a person's name.

Similarly, substituting one TLD for another in a domain name mark, or adding or deleting a "dot" or "http://www." or "www." to a domain name mark is generally permitted.

Example: Amending a mark from ABC.ORG to ABC.COM would not materially change the mark because the essence of both marks is still ABC.

1215.08(b) Adding or Deleting TLDs in Other Marks

If a mark that is not used as an Internet domain name includes a TLD, adding or deleting the TLD may be a material alteration.

Example: Deleting the term .COM from the mark ".COM [star]" used on sports magazines would materially change the mark.