807.14(b) Addition or Deletion of Previously Registered Matter
Addition. An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted. The rationale is that “[t]he addition of applicant’s well-known registered mark to the mark sought to be registered... is not a material change which would require republication of the mark.” Florasynth Labs., Inc. v. Mülhens, 122 USPQ 284, 284 (Comm’r Pats. 1959) (addition of applicant’s previously registered mark 4711 to the mark ELAN held not a material alteration). However, the addition of matter that the applicant has previously registered for different goods or services is not permissible. In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1886 (TTAB 1988). An amendment adding previously registered matter is also unacceptable if it substantially alters the original mark. In re John LaBatt Ltd., 26 USPQ2d 1077, 1078 (Comm’r Pats. 1992) (“Here, the applicant does not seek to merely add an element from one registration to another. Rather, the applicant seeks to eliminate its original mark, and substitute another. The exception to the material alteration rule clearly does not encompass cases where the original mark disappears.”).
Deletion. The question of whether a proposed amendment to delete previously registered matter from a mark is a material alteration should be determined without regard to whether the matter to be deleted is the subject of an existing registration.