T.M.E.P. § 1609.02
Amendment of Mark
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1609.02 Amendment of Mark
Mark in Registered Extension of Protection Cannot be Amended
As noted in TMEP §1609.01(a) , the holder of a registered extension of protection of an international registration to the United States cannot file an amendment under §7 of the Trademark Act. Because a registered extension of protection remains part of the international registration, all requests to record changes to such a registration must be filed at the IB. However, the Madrid Protocol and the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement ("Common Regs.") do not permit amendment of the mark in an international registration. If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application. The IB's Guide to International Registration, Para. B.II.69.02 (2004), provides as follows:[T]here is no provision for a mark that is recorded in the International Register to be amended in any way, either on renewal or at any other time. If the holder wishes to protect the mark in a form which differs, even slightly, from the mark as recorded, he must file a new international application. This is true even if the mark has been allowed to be changed in the basic application, the registration resulting from the basic application or the basic registration....
Therefore, the mark in a registered extension of protection cannot be amended.
Amendment of Mark in Registration Based on §1 or §44 Application
Under 15 U.S.C. 1057(e), upon application by the owner and payment of the prescribed fee, a registration based on an application under §1 or §44 of the Trademark Act may be amended for good cause, if the amendment does not materially alter the character of the mark. See TMEP §§807.14 et seq. and 1609.02(a) regarding material alteration.
1609.02(a) Determining What Constitutes Material Alteration of Mark
Section 7(e) of the Trademark Act prohibits an amendment that materially alters the character of the mark. "Material alteration" is the standard for evaluating amendments to marks at all relevant stages of processing, both during examination of the application and after registration. See 37 C.F.R. §§2.72 and 2.173(a); TMEP §§807.14 et seq.
In determining whether a proposed amendment is a material alteration of a registered mark, the USPTO will always compare the proposed amendment to the mark as originally registered.
The general test of whether an alteration is material is whether, if the mark in an application for registration had been published, the change would require republication in order to present the mark fairly for purposes of opposition. If republication would be required, the amendment is a material alteration.
An amendment of a registered mark is acceptable if the modified mark contains the essence of the original mark (i.e., the mark as originally registered), and the mark as amended creates essentially the same impression as the original mark. In re Umax Data System, Inc., 40 USPQ2d 1539 (Comm'r Pats. 1996). For example, in marks consisting of word(s) combined with a design, if the word is the essence of the mark and the design is merely background embellishment or display that is not integrated into the mark in any significant way, the removal or change of the design will not be a material alteration of the mark. See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm'r Pats. 1953). On the other hand, if a design is integrated into a mark and is a distinctive feature necessary for recognition of the mark, then a change in the design would materially alter the mark. See In re Dillard Department Stores, Inc., 33 USPQ2d 1052 (Comm'r Pats. 1993) (proposed deletion of highly stylized display features of mark "IN.VEST.MENTS" held to be a material alteration); Ex parte Kadane-Brown, Inc., 79 USPQ 307 (Comm'r Pats. 1948) (proposed amendment of "BLUE BONNET" mark to delete a star design and to change the picture of the girl held a material alteration).
When a mark is solely a picture or design, an alteration must be evaluated by determining whether the new form has the same meaning as the original mark, i.e., whether the form as altered would be likely to be recognized as the same mark. See Ex parte Black & Decker Mfg. Co., 136 USPQ 379 (Comm'r Pats. 1963) (proposed amendment to delete circle found to be a material alteration, where the circle was determined to be a prominent element of a design mark).
Marks entirely comprised of words can sometimes be varied as to their style of lettering, size, and other elements of form without resulting in a material alteration of the mark. See Ex parte Squire Dingee Co., 81 USPQ 258, recon. denied, 81 USPQ 543 (Comm'r Pats. 1949) (amendment from block lettering to script not a material alteration). However, changing from special form to standard characters, or the reverse, may be a material alteration. TMEP §807.03(d).
A generic or purely informational term may be deleted if the essence of the mark in appearance or meaning is not changed, but a word or feature that is necessary to the significance of the mark may not be deleted. Likewise, a unique or prominent design feature may not be deleted. See In re Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm'r Pats. 1974) (proposed amendment to block lettering from mark comprising a diamond design surrounding the word "FYER-WALL" with an inverted channel bracket around the letters "RW" held a material alteration). See also TMEP §807.14(a) regarding amendments deleting matter from a mark.
1609.02(b) New Drawing Required
When applying for an amendment to a registration that involves a change in the mark, the owner of the registration must submit a new drawing displaying the amended mark. 37 C.F.R. 2.173(a). See TMEP §§807 et seq. regarding drawings.
1609.02(c) Supporting Specimen and Declaration
The owner of the registration must submit one specimen showing use of the proposed mark as amended on or in connection with the goods or services, and must include an affidavit or a declaration under 37 C.F.R. 2.20 stating that the specimen was in use in commerce at least as early as the date the §7 amendment was filed. 37 C.F.R. 2.173(a). The affidavit or declaration must be signed and verified (sworn to) or supported by a declaration under 37 C.F.R. 2.20 by the owner or a person properly authorized to sign on behalf of the owner of the registration. A "person properly authorized to sign on behalf of the owner" is: (1) a person with legal authority to bind the owner; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or (3) an attorney as defined in 37 C.F.R. 10.1(c) who has an actual written or verbal power of attorney or an implied power of attorney from the owner. Generally, the USPTO does not question the authority of the person who signs an affidavit or declaration requesting an amendment under §7 of the Act, unless there is an inconsistency in the record as to the signatory's authority to sign.
A specimen showing use of the proposed mark as amended on or in connection with the goods or services is required even if the mark originally registered under 15 U.S.C. 1126(e), based on a foreign registration. See TMEP §§904 et seq. regarding specimens, and TMEP §1015 regarding the independence of a §44 registration from the underlying foreign registration.
1609.02(d) Amendment of Black and White Drawing of Mark for Which Color is Claimed to Substitute Color Drawing
Prior to November 2, 2003, the USPTO did not publish marks or issue registrations in color. An applicant who wanted to show color in a mark was required to submit a black and white drawing, with a statement describing the color(s). Effective November 2, 2003, the USPTO accepts color drawings. Black and white drawings with a color claim, or drawings that show color by use of lining patterns, are no longer permitted. 37 C.F.R. 2.52(b)(1).
Color drawings must be accompanied by a color claim naming the colors that are a feature of the mark, and a separate statement describing where the color(s) appear on the mark. 37 C.F.R. 2.52(b)(1); TMEP §807.07(a).
In a registration based on an application filed before November 2, 2003, if the application included a black and white drawing with a statement claiming color, the owner may file a request under §7 of the Trademark Act to substitute a color drawing for the black and white drawing. The request must include: (1) a color drawing showing the same colors claimed in the registration; (2) a color claim naming the color(s) that are a feature of the mark; (3) a description of where the color(s) appear in the mark; and (4) the fee required by 37 C.F.R. 2.6. 37 C.F.R. 2.173(a). No specimen is required if the owner is merely substituting a color drawing for a legally equivalent black and white drawing, and is not amending the mark.