TMEP 1202.19(c)(iv): Amending Descriptions of Repeating-Pattern Marks

October 2017 Edition of the TMEP

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1202.19(c)(iv)    Amending Descriptions of Repeating-Pattern Marks

An applicant may not amend a mark description if the amendment would describe a materially different mark than what was depicted in the original drawing. See 37 C.F.R. §2.72; In re Thrifty Inc. 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) (finding applicant’s proposed amendment to the mark description was a material alteration of the drawing because the "multiple impressions created by the wide variety of objects sought to be covered under the proposed description differ significantly from the original mark of a color placed on a building").

For applications in which the original drawing is a swatch-type drawing (see TMEP §1202.19(a)(iii)) and the original mark description indicates that the pattern is used a variety of ways, an applicant may amend the mark description to indicate that the pattern appears in a particular manner on a particular item, in accordance with a corresponding drawing amendment. These amendments are not considered material alterations. In these instances, the applicant may also be required to amend the identification of goods or services to delete any items that are inconsistent with the drawing. See TMEP §1202.19(f).