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When is an Alteration a “Material” Alteration

June 1, 2013 9:47 pm Published by Leave your thoughts

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 MARKAMENDED MARKDECISIONREFERENCE
NY JEWELRY OUTLETNEW YORK JEWELRY OUTLET AllowedIn re Finlay Fine Jewelry Corp., 41 USPQ2d1152 (T.T.A.B. 1996) (Binding Precedent)
  Allowed 
 (changing GRAN VINO to VINO DE)AllowedIn re Larios, 35 USPQ2d 1214(TTAB 1995)
  Allowed 
FREEDOMSTONEFREEDOM STONEAllowed  
  Allowed 
TURBO BLOWERSTURBO(removing generic term BLOWERS for blowers) Allowed In re CTB, Inc., App. No. 74136476 (Not Binding Precedent)
   Allowed 
    
 GOT STRAPS GOT STRAPS?(adding question mark) Denied 
LA PAULINA   Denied 
 TURBO(standard characters)Denied 
DISKBOOKCODA DISKBOOKDeniedIn re William Carroll, App. No. 74643905, T.T.A.B. June 8, 1999 (Not Binding Precedent)
KETTLE CLUBTHE RED KETTLE CLUB DeniedIn re Reese Brothers, Inc., App. No. 74668052 T.T.A.B. Mar. 8, 1999
        (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”  DeniedIn 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”  DeniedIn re Pierce Foods Corp., 230 USPQ 307, 308-309(TTAB 1986)
      DeniedIn re Dillard Department Stores Inc., 33 USPQ2d 1052 (Comr.Pats. 1993)
   FYER-WALL  Denied In re Richards-Wilcox Mfg. Co., 181 USPQ 735(Comr.Pats. 1974)
      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)
     (black and white)      (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) 
      (background border and moon removed)Denied In re Space Adventures, Ltd., App. No. 76391912, T.T.A.B. May 26, 2005 (Non-Binding Precedent)
            (Removal of “Amera” and “Rizk”)Denied In re Amera Wildflower Rizk, App. No. 75537891, T.T.A.B. Mar. 25, 2004 (Non-Binding Precedent) 
       (adding elephant and tiger elements)Denied 

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