1613.13 Differences in the Mark as Used on the Specimen and the Mark as Registered
The mark to which the §71 affidavit or declaration pertains must be essentially the same as the mark that appears in the registration. Where the specimen reflects a change in the mark since the registration issued, acceptance of the affidavit or declaration will depend on the degree of change. A material alteration of the mark will result in refusal of the affidavit or declaration on the ground that the registered mark is no longer in use. See In re Int’l Nickel Co., Inc., 282 F.2d 952, 127 USPQ 331 (C.C.P.A. 1960); In re Cont'l Distilling Corp., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958); Ex parte Richards, 153 USPQ 853 (Comm’r Pats. 1967). See also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); In re Holland Am. Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).
Mere changes in background or styling, or modernization, are not ordinarily considered to be material changes in the mark. See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953) (change in matter determined to be mere background and type face held not a material alteration of "PETER PAN" mark). However, 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 Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U. 797 F.3d at 1370, 116 USPQ2d at 1133-34 (holding minor adjustment to the font and alterations to the design element of registered mark insufficient to change the commercial impression created by the mark).
Generally, the standard used to determine whether a change is material under §71 is the same as the standard used to determine whether the mark in a registration based on an application under §1 or §44 of the Trademark Act may be amended under 15 U.S.C. §1057(e). If the mark could be amended under §7(e) because the character of the mark had not been materially altered, then the specimen filed with the §71 affidavit or declaration should be accepted. In determining whether a change constitutes a material alteration, the USPTO will always compare the mark in the specimen to the mark as originally registered. See TMEP §§807.14 et seq. and 1609.02(a) for additional information about material alteration.
However, where the registered mark is currently used as one of several elements in a composite mark, the decision as to whether to accept the specimen requires consideration of whether the registered mark makes an impression apart from the other elements of the composite mark. If the display of the composite is such that the essence of the registered mark makes a separate impression, then the specimen may be sufficient for purposes of the §71 requirement. In many cases, word elements are severable from design elements, because words tend to dominate in forming a commercial impression. See In re DeWitt Int’l Corp., 21 USPQ2d 1620 (Comm’r Pats. 1991). If the mark, as used on the §71 specimen, creates a separate impression apart from any other material on the specimen, then the specimen may be accepted as evidence of current use of the registered mark.
If the USPTO determines that the mark on the specimen is a material alteration of the registered mark, the holder may file a substitute specimen. If the holder files a substitute specimen after expiration of the relevant filing period specified in §71 of the Act, the holder must pay the deficiency surcharge required by §71(c) of the Act, 15 U.S.C. §1141k(c), and 37 C.F.R. §7.6. See TMEP §1613.12(c) regarding substitute specimens, and 37 C.F.R. §7.39 and TMEP §§1613.17 et seq. regarding the procedures for correcting deficiencies in a §71 affidavit.