TMEP 807.14: Material Alteration of Mark

October 2017 Edition of the TMEP

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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 Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740,743-44 (TTAB 1983).  This test applies to both an amendment of the description of a mark and an amendment of the mark on a drawing. In re Thrifty, Inc., 274 F.3d 1349, 1352-54, 61 USPQ2d 1121, 1123-24 (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 §§1609.02–1609.02(g) 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, 308-09 (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 Sys., Inc., 57 USPQ2d 1211, 1218-19 (TTAB 2000); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (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 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, TMEP §807.14(b) regarding the addition or deletion of previously registered matter, TMEP §807.14(c) regarding the addition or deletion of punctuation, TMEP §§1202.02–1202.02(f)(ii) regarding registration of trade dress marks, TMEP §§1202.02(c)(i)–1202.02(c)(i)(C) regarding drawings in trade dress applications, and TMEP §§1215.08–1215.08(b) regarding material alteration in marks comprised, in whole or in part, of domain names.