T.M.E.P. § 807.14
Material Alteration of Mark

Executive summary:

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807.14 Material Alteration of Mark

Trademark Rule 2.72, 37 C.F.R. 2.72, prohibits any amendment of the mark in an application under §1 or §44 of the Trademark Act that materially alters the mark on the drawing filed with the original application.

The test for determining whether an amendment is a material alteration is as follows:

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. The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application.

In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997), quoting Visa International Service Association v. Life-Code Systems, Inc., 220 USPQ 740,743-44 (TTAB 1983). This test applies to an amendment of the description of a mark as well as to an amendment of the mark on a drawing. In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001).

Although the test refers to republication, it also applies to amendments to marks proposed before publication. Material alteration is the standard used for evaluating amendments to marks in all phases of prosecution, i.e., before publication, after publication and after registration. See TMEP §§1609.02 et seq. regarding amendment of registered marks.

As a general rule, the addition of any element that would require a further search will constitute a material alteration. In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986). However, while the question of whether a new search would be required is a factor to be considered in deciding whether an amendment would materially alter a mark, it is not necessarily the determining factor. In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990).

Each case must be decided on its own facts, and these general rules are subject to exceptions. The controlling question is always whether the old and new forms of the mark create essentially the same commercial impression.

See TMEP §807.14(a) regarding amendments to delete matter from a drawing, TMEP §807.14(b) regarding the addition or deletion of previously registered matter, and TMEP §§1215.08 et seq. regarding material alteration in marks comprised, in whole or in part, of domain names.

807.14(a) Removal or Deletion of Matter from Drawing

An applicant may request deletions from the mark on the drawing, and the examining attorney may approve the request if he or she believes the deletions are appropriate and would not materially alter the mark. 37 C.F.R. 2.72.

Deletion of matter from the mark can result in a material alteration. 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 of a registered mark). However, the deletion of nondistinctive matter may not constitute a material alteration. For example, the deletion of the generic name of the goods or services would not generally be considered a material alteration unless it was so integrated into the mark that the deletion would alter the commercial impression. In some circumstances, descriptive or other types of nondistinctive matter may be deleted if the overall commercial impression is not altered. Also, deletions of matter determined to be unregistrable under §§2(a) or 2(b) of the Act (see TMEP §§1203 and 1204) are sometimes permissible.

If a specimen shows that matter included on a drawing is not part of the mark, the examining attorney may require that such matter be deleted from the mark on the drawing, if the deletion would not materially alter the mark. See In re Sazerac Co., Inc., 136 USPQ 607 (TTAB 1963) and cases cited therein.

The symbols "TM," "SM," and the registration notice (r) should be deleted from the drawing.

Informational matter, such as net weight and volume statements, lists of contents, addresses and similar matter, should also be deleted from the mark unless it is truly part of a composite mark and the removal of this matter would alter the overall commercial impression. If unregistrable matter, including informational matter and the name of the goods, is incorporated in a composite mark in such a way that its removal would change the commercial impression of the mark or make it unlikely to be recognized, the matter may remain on the drawing and be disclaimed. See TMEP §1213.03(b) regarding disclaimer of such matter. However, this type of matter rarely is part of a composite mark.

See TMEP §807.14(b) regarding deletion of previously registered matter.

807.14(b) Addition or Deletion of Previously Registered Matter

Addition. An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted. The rationale is that "[t]he addition of applicant's well-known registered mark to the mark sought to be registered ... is not a material change which would require republication of the mark." Florasynth Laboratories Inc. v. MŸlhens, 122 USPQ 284 (Comm'r Pats. 1959) (addition of applicant's previously registered mark "4711" to the mark "ELAN" held not a material alteration). However, the addition of matter that the applicant has previously registered for different goods or services is not permissible. In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1527 (Fed. Cir. 1997); In re Nationwide Industries Inc., 6 USPQ2d 1882, 1886 (TTAB 1988). An amendment adding previously registered matter is also unacceptable if it substantially alters the original mark. In re John LaBatt Ltd., 26 USPQ2d 1077, 1078 (Comm'r Pats. 1992) ("Here, the applicant does not seek to merely add an element from one registration to another. Rather, the applicant seeks to eliminate its original mark, and substitute another. The exception to the material alteration rule clearly does not encompass cases where the original mark disappears.").

Deletion. The question of whether a proposed amendment to delete previously registered matter from a mark is a material alteration should be determined without regard to whether the matter to be deleted is the subject of an existing registration.

807.14(c) Amendments to Correct "Internal Inconsistencies"

The USPTO will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application. 37 C.F.R. §§2.72(a)(2), 2.72(b)(2) and 2.72(c)(2).

Prior to October 30, 1999, in certain limited circumstances, the USPTO would accept an amendment that corrected an "internal inconsistency" in an application as originally filed, without regard to the issue of material alteration. Because 37 C.F.R. §§2.72(b), (c) and (d) did not expressly prohibit an amendment that materially altered the mark on the original drawing, the USPTO would accept an amendment to correct an "internal inconsistency," even if the amendment materially altered the mark on the original drawing. An application was considered "internally inconsistent" if the mark on the original drawing did not agree with the mark on the specimen in an application based on use, or with the mark on the foreign registration in an application based on §44 of the Act. See In re ECCS Inc., 94 F.3d 1578, 39 USPQ2d 2001 (Fed. Cir. 1996); In re Dekra e.V., 44 USPQ2d 1693 (TTAB 1997).

Effective October 30, 1999, 37 C.F.R. 2.72 was amended to expressly prohibit amendments that materially alter the mark on the drawing filed with the original application. Furthermore, 37 C.F.R. 2.52 was amended to state that the "drawing depicts the mark sought to be registered." Accordingly, the USPTO no longer accepts amendments to cure "internal inconsistencies" if these amendments materially alter the mark on the original drawing. In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000). See also In re Tetrafluor Inc., 17 USPQ2d 1160 (Comm'r Pats. 1990) (examining attorney properly refused to accept amendment to "correct typographical error" that materially altered mark on original drawing page).

If an applicant submits a separate drawing page (or a digitized image of a separate drawing page) showing a mark, and a different mark appears in the written application, the drawing controls for purposes of determining what the mark is. The applicant may not amend the mark if the amendment is a material alteration of the mark on the drawing page. See TMEP §§202.01 and 807.01. Humanoids Group v. Rogan, 375 F.3d 301, 71 USPQ2d 1745 (4th Cir. 2004); In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Dir USPTO 2001).

For example, if the applicant submits a drawing page showing the word mark "ABC and design," the applicant may not amend the application to delete the wording "and design," and add a design feature to the letters "ABC." However, the applicant may amend the drawing to "ABC." In re Meditech International Corp., 25 USPQ2d 1159 (TTAB 1990) (mark comprised of design of blue star found to be material alteration of typed words DESIGN OF BLUE STAR).

807.14(d) Material Alteration: Case References

Proposed amendments to marks were held to be material alterations in the following decisions: In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001) (amendment describing a mark as the color blue applied to an unlimited variety of objects found to be a material alteration of the mark on the original drawing, which depicted the color blue applied to a building); In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997) (proposed addition of house mark to conform to mark on foreign registration found to be material alteration of mark on drawing filed with original application); In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000) (proposed amendment from TACILESENSE to TACTILESENSE found to be material alteration); In re Meditech International Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) ("[a] drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, would both be considered material alterations vis-ˆ-vis a drawing consisting of the typed words 'DESIGN OF BLUE STAR'"); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990) (addition of wording "MR. SEYMOUR" to design mark held to be a material alteration); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (proposed amendment to replace typed drawing of "THE WINE SOCIETY OF AMERICA" with a special form drawing including those words with a crown design and a banner design bearing the words "IN VINO VERITAS" held to be a material alteration); In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (addition of house mark "SNAP" to product mark "RUST BUSTER" held a material alteration); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986) (addition of house mark "PIERCE" to "CHIK'N-BAKE" held a material alteration).

Proposed amendments to marks were found not to constitute a material alteration in the following cases: In re Finlay Fine Jewelry Corp., 41 USPQ2d 1152 (TTAB 1996) ("NEW YORK JEWELRY OUTLET" not material alteration of "NY JEWELRY OUTLET"); In re Larios S.A., 35 USPQ2d 1214 (TTAB 1995) ("VINO DE MALAGA LARIOS" and design not material alteration of "GRAN VINO MALAGA LARIOS" with similar design); Visa International Service Association v. Life-Code Systems, Inc., 220 USPQ 740 (TTAB 1983) (amendment inverting the design portion of the mark held not a material alteration).