BitLaw

807.14    Material Alteration of Mark

Trademark Rule 2.72, 37 C.F.R. §2.72, prohibits any amendment of the mark or mark description in an application under §1 or §44 of the Trademark Act that materially alters the mark as originally filed. A determination of whether a proposed amendment materially alters the mark is made by comparing the proposed amendment with the description or drawing of the mark in the original application. 37 C.F.R. §§2.72(a)(2), (b)(2), (c)(2).

When comparing the proposed amendment with the original mark, the test for determining 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 Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740,743-44 (TTAB 1983)); see In re Thrifty, Inc., 274 F.3d 1349, 1352-53, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001).  This test applies to both an amendment of the description of a mark and an amendment of the mark on a drawing. See In re Thrifty, Inc., 274 F.3d at 1353-54, 61 USPQ2d at 1124.

Although the general test refers to republication, it also applies to amendments to marks proposed before publication. See In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1219 (TTAB 2000).  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 §§1609.02–1609.02(g) regarding amendment of registered marks.

Generally, the addition of any element that would require a further search will also constitute a material alteration. In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986).  However, whether a new search would be required is merely one factor to be considered in deciding whether an amendment would materially alter a mark; it is not necessarily the "controlling" factor. In re Guitar Straps Online, LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Who? Vision Sys., Inc., 57 USPQ2d at 1218-19.

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." In re Greenwood, 2020 USPQ2d 11439, at *8 (TTAB 2020) (citing Visa Int’l Serv. Ass’n, 220 USPQ at 743-44; In re Guitar Straps Online, LLC, 103 USPQ2d at 1747); see Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1370, 116 USPQ2d 1129, 1133-34 (Fed. Cir. 2015) (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).

See TMEP §807.14(a) regarding amendments to delete matter from a drawing, §807.14(b) regarding the addition or deletion of previously registered matter, §807.14(c) regarding the addition or deletion of punctuation, §§1202.02(c)(i)–1202.02(c)(i)(C) regarding drawings in trade dress applications, and §§1215.08–1215.08(b) regarding material alteration in marks comprised, in whole or in part, of domain names.