1011.03 Amendment of Drawing
Section 44 applicants often try to amend the mark in the U.S. application to overcome an objection that the mark in the drawing does not agree with the mark in the foreign registration. Amendments to drawings in §44 applications are governed by 37 C.F.R. §2.72(c). An applicant cannot amend the drawing in the U.S. application to conform to the mark in the foreign registration if the amendment would result in a material alteration of the mark on the drawing submitted with the original application in the United States. In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997); In re Wine Soc'y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989). Thus, when a §44 applicant proposes to amend its drawing, the examining attorney must consider: (1) whether the proposed amendment of the drawing would result in a material alteration of the mark on the original drawing; and (2) whether the proposed amendment would result in a mark that is a substantially exact representation of the mark in the foreign registration. In In re Larios S.A., 35 USPQ2d 1214, 1216 (TTAB 1995), the Trademark Trial and Appeal Board held that the mark “GRAN VINO MALAGA LARIOS” and design on the drawing originally filed with the U.S. application was not a substantially exact representation of the mark “VINO DE MALAGA LARIOS” with a similar design in the foreign registration; however, the Board found that amendment of the drawing to conform to the foreign registration was not a material alteration within the meaning of 37 C.F.R. §2.72. The Board noted that “[t]he material alteration test... is not quite as rigorous as the substantially exact representation standard and thus allows for a bit more leeway or flexibility with respect to... amendment of the drawing....” In re Larios S.A., 35 USPQ2d at 1217. See TMEP §§807.14 et seq. regarding material alteration.