As stated in section 1609.02(a) Determining What Constitutes Material Alteration of Mark of the Trademark Manual of Examination Procedure:

Section 7(e) of the Trademark Act prohibits an amendment that materially alters the character of the mark. "Material alteration" is the standard for evaluating amendments to marks at all relevant stages of processing, both during examination of the application and after registration. See 37 C.F.R. §§2.72 and 2.173(a); TMEP §§807.14 et seq.

In determining whether a proposed amendment is a material alteration of a registered mark, the USPTO will always compare the proposed amendment to the mark as originally registered.

The general test of whether an alteration is material is whether, if the mark in an application for registration had been published, the change would require republication in order to present the mark fairly for purposes of opposition. If republication would be required, the amendment is a material alteration.

An amendment of a registered mark is acceptable if the modified mark contains the essence of the original mark (i.e., the mark as originally registered), and the mark as amended creates essentially the same impression as the original mark. In re Umax Data System, Inc., 40 USPQ2d 1539 (Comm'r Pats. 1996). For example, in marks consisting of word(s) combined with a design, if the word is the essence of the mark and the design is merely background embellishment or display that is not integrated into the mark in any significant way, the removal or change of the design will not be a material alteration of the mark. See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm'r Pats. 1953). On the other hand, if a design is integrated into a mark and is a distinctive feature necessary for recognition of the mark, then a change in the design would materially alter the mark. See In re Dillard Department Stores, Inc., 33 USPQ2d 1052 (Comm'r Pats. 1993) (proposed deletion of highly stylized display features of mark "IN•VEST•MENTS" held to be a material alteration); Ex parte Kadane-Brown, Inc., 79 USPQ 307 (Comm'r Pats. 1948) (proposed amendment of "BLUE BONNET" mark to delete a star design and to change the picture of the girl held a material alteration).

When a mark is solely a picture or design, an alteration must be evaluated by determining whether the new form has the same meaning as the original mark, i.e., whether the form as altered would be likely to be recognized as the same mark. See Ex parte Black & Decker Mfg. Co., 136 USPQ 379 (Comm'r Pats. 1963) (proposed amendment to delete circle found to be a material alteration, where the circle was determined to be a prominent element of a design mark).

Marks entirely comprised of words can sometimes be varied as to their style of lettering, size, and other elements of form without resulting in a material alteration of the mark. See Ex parte Squire Dingee Co., 81 USPQ 258, recon. denied, 81 USPQ 543 (Comm'r Pats. 1949) (amendment from block lettering to script not a material alteration). However, changing from special form to standard characters, or the reverse, may be a material alteration. TMEP §807.03(d).

A generic or purely informational term may be deleted if the essence of the mark in appearance or meaning is not changed, but a word or feature that is necessary to the significance of the mark may not be deleted. Likewise, a unique or prominent design feature may not be deleted. See In re Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm'r Pats. 1974) (proposed amendment to block lettering from mark comprising a diamond design surrounding the word "FYER-WALL" with an inverted channel bracket around the letters "RW" held a material alteration). See also TMEP §807.14(a) regarding amendments deleting matter from a mark.

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  • Definition: Material alteration.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007).
      • "Material alteration" is the standard for evaluating whether a change in the form of a registered mark is permissible. See Trademark Rules 2.72 and 2.73, 37 C.F.R. §§2.72 and 2.73.
  • What constitutes a material alteration.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007).
      • A material alteration exists if the old and new formats do not create the same general commercial impression. See J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair Competition §§19:58:50 and 19:133 (4th ed. 2007). In contrast, a change in the form of a mark does not constitute abandonment or a break in continuous use if the change neither creates a new mark nor changes the commercial impression of the old mark. Id. at §17:26. Marks entirely comprised of words can sometimes be varied as to their style of lettering, size and other elements of form without resulting in a material alteration of the mark. See Ex parte Squire Dingee Co., 81 USPQ 258, recon. denied, 81 USPQ 543 (Comm'r Pats. 1949) (amendment from rectangular lettering to script not a material alteration); and TMEP §1609.02(a) (4th ed. April 2005). With respect to Section 8 filings, mere changes in background or styling, or modernization, are not ordinarily considered to be material changes in the mark. See TMEP §1604.13 (4th ed. rev. April 2005).
  • The touchstone for permissible amendments to the mark is that the mark retains the same overall commercial impression.
    • In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999).
      • In looking more closely at Rule 2.72(a), we note that the touchstone for permissible amendments to the mark is that the mark retains the same overall commercial impression. See Visa International Service Assn. v. Life Code Systems, 220 USPQ 740, 743-44 (TTAB 1983) ["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…"].
  • Descriptive or other types of nondistinctive matter may be deleted, if the overall commercial impression is not altered.
    • In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999).
      • Similarly, sometimes even descriptive or other types of nondistinctive matter may be deleted, if the overall commercial impression is not altered.
  • While there is necessarily some subjectivity in applying this standard to a particular fact pattern, the TTAB looks to past decisions for guidance in making this determination.
    • In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999).
      • While there is necessarily some subjectivity in applying this standard to a particular fact pattern, we look to past decisions to guide us in making this determination.
  • Determining whether the drawing protion is integrated with the word portion of the mark does not necessarily hinge on whether the two components are touching each other.
    • In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999).
      • Both the Trademark Examining Attorney and applicant discuss the degree of "integration" of the swirling design. For example, the Trademark Examining Attorney contends that "[t]he design is an integral part of the word portion of the mark, because it is attached to the crossbar of the letter "t" in TURBO." While we agree that the swirling device is an essential part of the original mark and hence "integrated" into the composite, whether or not the tip of the funnel physically touches the crossbar of the letter "t" is not the sole criterion leading us to this result.
  • Where there is no design feature in the mark that is integral to the word portion, a change in the style of lettering does not constitute a material alteration of the mark as registered.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007).
      • Unlike the cases referenced by petitioner, there is no design feature in the registered rectangular form of the mark that is integral to the word portion of the mark. Further, both the semicircular and linear forms of the mark convey the same commercial impression. Moreover, the semicircular form of the mark maintains the commercial impression of the registered mark in the context of the overall duckman display (i.e., it is a separate element from the other wording and designs on the specimen). Thus, respondent's change in the style of its lettering does not constitute a material alteration of the mark as registered.
  • Deletion of the generic name of goods from a mark, which does not alter its commercial impression, does not generally constitute a material alteration.
    • In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999).
      • For example, the Office often finds that the deletion of the generic name of the goods (e.g., from "TURBO BLOWERS" to simply "TURBO") would not generally constitute a material alteration (unless it was so integrated into the mark that the deletion would alter the commercial impression).
  • When making a determination about material alteration during the ex parte examination process, the Trademark Examining Attorney must make a distinction between two categories of amendments.
    • In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999).
      • It is also important to note that when making a determination about material alteration during the ex parte examination process, the Trademark Examining Attorney must make a distinction between two categories of amendments. See In re ECCS, Inc., 94 F.3d 1578, 39 USPQ2d 2001 (Fed. Cir. 1996).
  • The first category are amendments to the drawing proposed in order to conform the original drawing to the mark sought to be registered as shown by the specimens showing the mark as actually used (this amendment also applies to inconsistencies between marks in a foreign registration and the U.S. application).
    • In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999).
      • In the first category are amendments to the drawing proposed in order to conform the original drawing to the mark sought to be registered as shown by the specimens as filed with the application – i.e., showing the mark as actually used. This first category of amendments, as defined in ECCS, is also broad enough to include an internal inconsistency between the version shown in the drawing and that shown on the foreign registration certificate filed with the U.S. application, if the U.S. trademark application is based upon a foreign registration under Section 44(e) of the Act. See In re Dekra e.V., 44 USPQ2d 1693 (TTAB 1997).4 FOOTNOTE 4 "Contrast this result with the situation in In re Hacot- Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997) where the applicant filed the U.S. application claiming a right of priority under Section 44(d). Here, the only mark shown in the application as originally filed appeared on the drawing page. There, the file did not contain the foreign registration certificate showing the foreign mark until ten months after the original filing date."
  • Amendments involving a mark in the drawing slightly different from the mark displayed on the specimens should be permitted under Trademark Rule 2.72.
    • In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999).
      • Our principal reviewing court found in such cases that amendments involving a mark in the drawing slightly different from the mark displayed on the specimens should be permitted under Trademark Rule 2.72.
  • The second category involves amendments that attempt to change the drawing of the mark in the application as originally filed where there has been no ambiguity about the mark.
    • In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999).
      • However, the second category involves amendments that attempt to change the drawing of the mark in the application as originally filed where there has been no ambiguity about the mark. This would include use-based applications where there is clearly no inconsistency between the specimens and drawing as originally filed.
  • An amendment to the drawing subsequent to the filing date, even to reflect the mark as used later by applicant, falls into the second category of amendments to drawings.
    • In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999).
      • In the instant case, there was no ambiguity as to the mark identified in the application papers as originally filed. As in In re Finlay Fine Jewelry Corp., 41 USPQ2d 1152 (TTAB 1996), this case involves an attempt to amend the mark after an unambiguous, intent to use application had been filed. As noted in Finlay, an amendment to the drawing subsequent to the filing date, even to reflect the mark as used later by applicant, falls into the second ECCS category of amendments to drawings.
  • Case examples of material alteration.
    • In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999).
      • Applicant argues that on the substantial question of material alteration we are asked to decide herein, its case is similar to the facts of Finlay. In that case, the question was whether it was a permissible amendment under Rule 2.72(a) to change the typed drawing, "NY JEWELRY OUTLET" to another typed drawing spelling out "NY…" e.g., "NEW YORK JEWELRY OUTLET." However, most consumers would have verbalized the "NY" portion of the mark in the original drawing as "NEW YORK" in any case. Accordingly, we find those facts cannot be deemed analogous to the present case.
    • In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999).
      • In Abolio, the Board found that the prominent pictorial elements in applicant's proposed amended drawing above (e.g., a label containing a cartoon-like, young girl standing on a cross section of cheese) constituted a material alteration from the typed drawing, "LA PAULINA" alone, as it created a very different impression. See also, In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) [addition of crown design and banner design bearing the words "IN VINO VERITAS" is a material alteration of typewritten word mark "THE WINE SOCIETY OF AMERICA"]; In re Pierce Foods Corp., 230 USPQ 307, 308-309 (TTAB 1986) [addition of house mark, "PIERCE," to product mark "Chik'n-Bake and design" is a material alteration]; In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990) [Because of a likelihood of confusion refusal, applicant sought to amend its application by penciling the designation "MR. SEYMOUR" into the wiener chef's cap.] The Trademark Examining Attorney was upheld in that the Board found that this change involved a material alteration.
  • Case Finding: Cancellation of the resulting registration which is based on a finding of material alteration would, in effect, punish opposer for an alleged error on the part of the examining attorney, without allowing opposer the remedies it would have had if the issue had been raised during examination.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • At this point, cancellation of the resulting registration which is based on a finding of material alteration would, in effect, punish opposer for an alleged error on the part of the examining attorney, without allowing opposer the remedies it would have had if the issue had been raised during examination. See Century 21 Real Estate, 10 USPQ2d at 2035.
  • Had the examining attorney refused the amendment as a material alteration under 37 C.F.R. §2.72, opposer would have been entitled to maintain its filing date with respect to the original drawing, or appeal, or petition for review the examining attorney's refusal to accept the amendment.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • Furthermore, had the examining attorney refused the amendment as a material alteration under 37 C.F.R. §2.72, opposer would have been entitled to maintain its filing date with respect to the original drawing, or appeal (or petition for review) the examining attorney's refusal to accept the amendment.
Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010) Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007) In re CTB, Inc., Serial No. 74/136,476, (TTAB 1999) Grand Total
In re Dekra e.V., 44 USPQ2d 1693 (TTAB 1997) 1
In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997) 1
In re ECCS Inc., 94 F.3d 1578, 39 USPQ2d 2001 (Fed. Cir. 1996) 1
In re Finlay Fine Jewelry Corp., 41 USPQ2d 1152 (TTAB 1996) 1
In re Abolio y Rubio, S.A.C.I. y G., 24 USPQ2d 1153 (TTAB 1992) 1
In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990) 1
In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) 1
Century 21 Real Estate Corp. v. Century Life of Am., 10 USPQ2d 2034 (TTAB 1989) 1
In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986) 1
Visa International Service Association v. Life-Code Systems Inc., 220 USPQ 740 (TTAB 1983) 1
Ex parte Squire Dingee Co., 81 USPQ 258, recon. denied, 81 USPQ 543 (Comm'r Pats. 1949) 1
Grand Total 1 1 9 11

C.F.R. Sec. 2.72. Amendments to description or drawing of the mark.

  1. (a) In an application based on use in commerce under section 1(a) of the Act, the applicant may amend the description or drawing of the mark only if:
    1. (1) The specimens originally filed, or substitute specimens filed under §2.59(a), support the proposed amendment; and
    2. (2) The proposed amendment does not materially alter the mark. The Office 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.
  2. (b) In an application based on a bona fide intention to use a mark in commerce under section 1(b) of the Act, the applicant may amend the description or drawing of the mark only if:
    1. (1) The specimens filed with an amendment to allege use or statement of use, or substitute specimens filed under §2.59(b), support the proposed amendment; and
    2. (2) The proposed amendment does not materially alter the mark. The Office 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.
  3. (c) In an application based on a claim of priority under section 44(d) of the Act, or on a mark duly registered in the country of origin of the foreign applicant under section 44(e) of the Act, the applicant may amend the description or drawing of the mark only if:
    1. (1) The description or drawing of the mark in the foreign registration certificate supports the amendment; and
    2. (2) The proposed amendment does not materially alter the mark. The Office 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.

 

 

C.F.R. Sec. 2.173. Amendment of registration.

  1. (a) Form of amendment. The owner of a registration may apply to amend a registration or to disclaim part of the mark in the registration. The owner must submit a written request specifying the amendment or disclaimer. If the registration is involved in an inter partes proceeding before the Trademark Trial and Appeal Board, the request must be filed by appropriate motion to the Board.
  2. (b) Requirements for request. A request for amendment or disclaimer must:
    1. (1) Include the fee required by §2.6;
    2. (2) Be signed by the owner of the registration, someone with legal authority to bind the owner ( e.g. , a corporate officer or general partner of a partnership), or a practitioner who meets the requirements of §11.14, and verified or supported by a declaration under §2.20; and
    3. (3) If the amendment involves a change in the mark: a new specimen showing the mark as used on or in connection with the goods or services; an affidavit or declaration under §2.20 stating that the specimen was in use in commerce at least as early as the filing date of the amendment; and a new drawing of the amended mark.
  3. (c) Registration must still contain registrable matter. The registration as amended must still contain registrable matter, and the mark as amended must be registrable as a whole.
  4. (d) Amendment may not materially alter the mark. An amendment or disclaimer must not materially alter the character of the mark.
  5. (e) Amendment of identification of goods. No amendment in the identification of goods or services in a registration will be permitted except to restrict the identification or to change it in ways that would not require republication of the mark.
  6. (f) Conforming amendments may be required. If the registration includes a disclaimer, description of the mark, or other miscellaneous statement, any request to amend the registration must include a request to make any necessary conforming amendments to the disclaimer, description, or other statement.
  7. (g) Elimination of disclaimer . No amendment seeking the elimination of a disclaimer will be permitted, unless deletion of the disclaimed portion of the mark is also sought.