TMEP 807.14(f): Material Alteration: Case References

This is the October 2015 Edition of the TMEP

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807.14(f)    Material Alteration: Case References

Proposed amendments to marks were found to be material alterations in the following decisions: In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001) (finding amendment describing a mark as the color blue applied to an unlimited variety of objects to be a material alteration of the mark on the original drawing, which depicted the color blue applied to a building); In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997) (finding proposed addition of house mark to conform to mark on foreign registration to be a material alteration of the mark on the drawing filed with original application); In re Guitar Straps Online, LLC, 103 USPQ2d 1745 (TTAB 2012) (finding proposed amendment from “GOT STRAPS” to ”GOT STRAPS?” to be a material alteration); In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (TTAB 2000) (finding proposed amendment from “TACILESENSE” to “TACTILESENSE” to be a material alteration); In re Meditech Int’l Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (“A drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, would both be considered material alterations vis-à-vis a drawing consisting of the typed words DESIGN OF A BLUE STAR.”); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990) (finding addition of wording “MR. SEYMOUR” to design mark to be a material alteration); In re The Wine Soc’y of Am., Inc., 12 USPQ2d 1139 (TTAB 1989) (finding proposed amendment to replace typed drawing of “THE WINE SOCIETY OF AMERICA” with a special form drawing including those words with a crown design and a banner design bearing the words “IN VINO VERITAS” to be a material alteration); In re Nationwide Indus., Inc., 6 USPQ2d 1882 (TTAB 1988) (finding addition of house mark “SNAP” to product mark “RUST BUSTER” to be a material alteration); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986) (finding addition of house mark “PIERCE” to “CHIK’N BAKE” to be a material alteration).

Proposed amendments to marks were found not to constitute a material alteration in the following cases: 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) (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); In re Innovative Cos., LLC, 88 USPQ2d 1095 (TTAB 2008) (finding amendment from “FREEDOMSTONE” to “FREEDOM STONE” not to be a material alteration); Paris Glove of Can., Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1862 (TTAB 2007) (finding “AQUASTOP” depicted on one line in semicircular form not to be a material alteration of “AQUA STOP” depicted on two lines in rectangular form; the Board explained that “the commercial impression of the mark is dependent upon the literal terms AQUA STOP and not on the rectangular, semicircular or linear forms of display”); In re Finlay Fine Jewelry Corp., 41 USPQ2d 1152 (TTAB 1996) (finding “NEW YORK JEWELRY OUTLET” not to be a material alteration of “NY JEWELRY OUTLET”); In re Larios, S.A., 35 USPQ2d 1214 (TTAB 1995) (finding “VINO DE MALAGA LARIOS” and design not to be a material alteration of “GRAN VINO MALAGA LARIOS” with similar design); Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740 (TTAB 1983) (finding amendment inverting the design portion of the mark not to be a material alteration).