807.14(f) Material Alteration: Case References
Proposed amendments to marks were held to be material alterations in the following decisions: In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001) (amendment describing a mark as the color blue applied to an unlimited variety of objects found 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) (proposed addition of house mark to conform to mark on foreign registration found to be material alteration of mark on drawing filed with original application); In re Guitar Straps Online, LLC, 103 USPQ2d 1745 (TTAB 2012) (proposed amendment from "GOT STRAPS" to "GOT STRAPS?" found to be a material alteration); In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000) (proposed amendment from "TACILESENSE" to "TACTILESENSE" found to be 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) (addition of wording "MR. SEYMOUR" to design mark held to be a material alteration); In re The Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (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" held to be a material alteration); In re Nationwide Industries, Inc., 6 USPQ2d 1882 (TTAB 1988) (addition of house mark "SNAP" to product mark "RUST BUSTER" held a material alteration); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986) (addition of house mark "PIERCE" to "CHIK’N-BAKE" held a material alteration).
Proposed amendments to marks were found not to constitute a material alteration in the following cases: In re Innovative Companies, LLC, 88 USPQ2d 1095 (TTAB 2008) (amendment from "FREEDOMSTONE" to "FREEDOM STONE" held not a material alteration); Paris Glove of Canada, Ltd. v. SBC/Sportco Corp., 84 USPQ2d 1856, 1862 (TTAB 2007) ("AQUASTOP" depicted on one line in semicircular form not material alteration of "AQUA STOP" depicted on two lines in rectangular form; the Board found 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) ("NEW YORK JEWELRY OUTLET" not material alteration of "NY JEWELRY OUTLET"); In re Larios S.A., 35 USPQ2d 1214 (TTAB 1995) ("VINO DE MALAGA LARIOS" and design not material alteration of "GRAN VINO MALAGA LARIOS" with similar design); Visa Int’l Service Ass’n v. Life-Code Systems, Inc., 220 USPQ 740 (TTAB 1983) (amendment inverting the design portion of the mark held not a material alteration).