Yearly Archives: 2013

When is an Alteration a “Material” Alteration

Posted on Thursday 1, 2013

I was handling an issue today involving a situation where a client had filed an application for a mark, but then made some changes to the mark and wanted to “update” the application. The Trademark Office issued a preliminary refusal to the requested amendment on the ground that the change allegedly constituted a “material alteration.” I have handled many of these types of changes and responded to many such refusals in the past, however, it had been about a year since the last one. Therefore, I decided to update my research records to prepare the argument. In doing my research, I noticed a profound lack of visual samples on the Internet. So, I consolidated as many cases (both precedent and non-precedent) that I could find and stuck them into a chart. In my opinion, it helps to visually perceive the alterations that have been allowed versus those that have been denied. Hope you enjoy and/or that it helps.

First, the law:

Trademark Rule 2.72, 37 C.F.R. § 2.72, prohibits any amendment of the mark that materially alters the mark on the drawing filed with the original application. Section 807.14 of the Trademark Manual of Examining Procedure (TMEP) discusses the “Material Alteration” test and states: “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.”

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 (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 Systems, Inc., 57 USPQ2d 1211 (TTAB 2000); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (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.

Now, the visual samples:

ORIGINAL MARK AMENDED MARK DECISION REFERENCE
NY JEWELRY OUTLET NEW YORK JEWELRY OUTLET  Allowed In re Finlay Fine Jewelry Corp., 41 USPQ2d1152 (T.T.A.B. 1996) (Binding Precedent)
 image001  image003 Allowed  
 image007 image005

(changing GRAN VINO to VINO DE)

Allowed In re Larios, 35 USPQ2d 1214(TTAB 1995)
 image010  image012 Allowed  
FREEDOMSTONE FREEDOM STONE Allowed   
 image014  image016 Allowed  
TURBO BLOWERS TURBO

(removing generic term BLOWERS for blowers)

 Allowed  In re CTB, Inc., App. No. 74136476 (Not Binding Precedent)
 image018  image020

 

Allowed  
       
 GOT STRAPS  GOT STRAPS?

(adding question mark)

 Denied  
LA PAULINA   image022

 

Denied  
 image024 TURBO

(standard characters)

Denied  
DISKBOOK CODA DISKBOOK Denied In re William Carroll, App. No. 74643905, T.T.A.B. June 8, 1999 (Not Binding Precedent)
KETTLE CLUB THE RED KETTLE CLUB  Denied In re Reese Brothers, Inc., App. No. 74668052 T.T.A.B. Mar. 8, 1999
 image026

 

 image027

 

 

 

 

 

(adding MR. SEYMOUR to hat)

Denied

 

In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990)
Researching image but desribed as: 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”

 

  Denied In re Wine Society of America Inc., 12 USPQ2d 1139(TTAB 1989)
Researching image but desribed as: “addition of house mark, “PIERCE,” to product mark “Chik’n-Bake and design”

 

  Denied In re Pierce Foods Corp., 230 USPQ 307, 308-309(TTAB 1986)
 image029

 

 

 

 image030

 

Denied In re Dillard Department Stores Inc., 33 USPQ2d 1052 (Comr.Pats. 1993)
 image032

 

 

FYER-WALL 

 

Denied

 

In re Richards-Wilcox Mfg. Co., 181 USPQ 735(Comr.Pats. 1974)
 image034

 

 

 

 image036

 

Denied

 

In re Jen USA, Inc., App. No. 76652688, T.T.A.B. Oct. 7, 2008 (Non-Biding Precedent)
MT RAINIER

(standard characters)

RAINIER

(standard characters)

Denied

 

In re Thor Tech, App. No. 78717682, T.T.A.B. Aug. 12, 2010 (Non-Binding Precedent)
SILENT FIREMAN

(standard characters)

YOUR SILENT FIREMAN

(standard characters)

Denied

 

In re No-Burn Investments, L.L.C., App. No. 76629397, T.T.A.B. Nov.29, 2007 (Non-Binding Precedent)
image038

 

 

 

 

 

(black and white)

 image039 

 

 

 

 

(color claimed and removal of “De Chene POLSKA”)

Denied

 

In re Debowa Polska De Chêne Polska, App. No. 76612005, T.T.A.B. Feb. 6, 2007 (Non-Binding Precedent) 
 image042

 

 image044

 

 

 

(background border and moon removed)

Denied

 

In re Space Adventures, Ltd., App. No. 76391912, T.T.A.B. May 26, 2005 (Non-Binding Precedent)
 image046

 

 

 

 

 

 image047

 

 

 

 

 

(Removal of “Amera” and “Rizk”)

Denied

 

In re Amera Wildflower Rizk, App. No. 75537891, T.T.A.B. Mar. 25, 2004 (Non-Binding Precedent) 
 

image050

 image051

 

 

 

 

 

(adding elephant and tiger elements)

Denied  

Top 10 Trademark Registration Lawyer for the Entire State of California!

Posted on Wednesday 1, 2013

The Kinder Law Group is pleased and honored to announce that the founder of the firm, Brian P. Kinder, has been ranked in the top 10 of all trademark application lawyers for the entire State of California. He was previously ranked in the top 10 for the Orange County, California area. The ranking appears in one of the leading online lawyer rating websites – www.avvo.com. As explained on the company’s website (see link below), the Avvo® rating system is completely unbiased (i.e., unlike other attorney ranking sites, you can’t pay to increase your rank on Avvo) and takes a number of factors into consideration, including, years in practice, disciplinary history, professional achievements and industry recognition of the lawyer. The Kinder Law Group couldn’t be more thrilled about this highly credible and prestigious ranking.

For an explanation of the Avvo® ranking system see www.avvo.com/support/avvo_rating. This report is based upon a search for “Trademark Infringement” lawyers located in “California” performed on January 30, 2013.

Brian Kinder – Top 10 Trademark Infringement Lawyer in All of California

Posted on Wednesday 1, 2013

The Kinder Law Group is pleased and honored to announce that the founder of the firm, Brian P. Kinder, has been ranked in the top 10 of all trademark infringement lawyers for the entire State of California. He was previously ranked in the top 10 for the Orange County, California area. The ranking appears in one of the leading online lawyer rating websites – www.avvo.com. As explained on the company’s website (see link below), the Avvo® rating system is completely unbiased (i.e., unlike other attorney ranking sites, you can’t pay to increase your rank on Avvo) and takes a number of factors into consideration, including, years in practice, disciplinary history, professional achievements and industry recognition of the lawyer. The Kinder Law Group couldn’t be more thrilled about this highly credible and prestigious ranking.

For an explanation of the Avvo® ranking system see www.avvo.com/support/avvo_rating. This report is based upon a search for “Trademark Infringement” lawyers located in “California” performed on January 30, 2013.