When is an Alteration a “Material” Alteration
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: