807.14(d) Amendments to Correct “Internal Inconsistencies”
The USPTO will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application. 37 C.F.R. §2.72(a)(2), (b)(2), (c)(2).
Prior to October 30, 1999, in certain limited circumstances, the USPTO would accept an amendment that corrected an “internal inconsistency” in an application as originally filed, without regard to the issue of material alteration. Because 37 C.F.R. §2.72(b), (c), and (d) did not expressly prohibit an amendment that materially altered the mark on the original drawing, the USPTO would accept an amendment to correct an “internal inconsistency,” even if the amendment materially altered the mark on the original drawing. An application was considered “internally inconsistent” if the mark on the original drawing did not agree with the mark on the specimen in an application based on use, or with the mark on the foreign registration in an application based on §44 of the Act. See In re ECCS Inc., 94 F.3d 1578, 1581, 39 USPQ2d 2001, 2004 (Fed. Cir. 1996); In re Dekra e.V., 44 USPQ2d 1693, 1695-96 (TTAB 1997).
Effective October 30, 1999, 37 C.F.R. §2.72 was amended to prohibit amendments that materially alter the mark on the drawing filed with the original application. Furthermore, 37 C.F.R. §2.52 was amended to state that the “drawing depicts the mark sought to be registered.” Accordingly, the USPTO no longer accepts amendments to cure “internal inconsistencies,” if these amendments materially alter the mark on the original drawing. See In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1217 (TTAB 2000); see also In re Tetrafluor Inc., 17 USPQ2d 1160, 1162 (Comm'r Pats. 1990) (finding examining attorney properly refused to accept amendment to “correct a typographical error” that materially altered mark on original drawing page).
If a paper application includes a separate drawing page showing a mark, and a different mark appears in the written application, the drawing controls for purposes of determining what the mark is. In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063, 1064 (Dir USPTO 2001); see TMEP §§202.01, 807.01. Similarly, if an applicant enters a standard character mark, or attaches a digitized image of a mark, in the “Mark” field on a TEAS application, and a different mark appears in another field, the mark entered in the “Mark” field will control for purposes of determining what the mark is. The applicant may not amend the mark if the amendment is a material alteration of the mark on the drawing.
For example, if the applicant submits a drawing page showing the word mark “ABC and design,” the applicant may not amend the application to delete the wording “and design,” and add a design feature to the letters “ABC.” However, the applicant may amend the drawing to “ABC.” See In re Meditech Int’l Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (finding mark comprised of a design of a blue star to be a material alteration of the typed words “DESIGN OF A BLUE STAR”).