807.14    Material Alteration of Mark

Trademark Rule 2.72, 37 C.F.R. §2.72, prohibits any amendment of the mark in an application under §1 or §44 of the Trademark Act that materially alters the mark on the drawing filed with the original application.

The test for determining whether an amendment is a material alteration is as follows:

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.

In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997), quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740,743-44 (TTAB 1983).  This test applies to both an amendment of the description of a mark and an amendment of the mark on a drawing.   In re Thrifty, Inc., 274 F.3d 1349, 1352-54, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001).

Although the test refers to republication, it also applies to amendments to marks proposed before publication.  Material alteration is the standard used for evaluating amendments to marks in all phases of prosecution, i.e., before publication, after publication, and after registration.  See TMEP §§1609.02–1609.02(g) regarding amendment of registered marks.

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, 308-09 (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 Sys., Inc., 57 USPQ2d 1211, 1218-19 (TTAB 2000) ; In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (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. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1370, 116 USPQ2d 1129, 1133-34 (Fed. Cir. 2015) (holding minor adjustment to the font and alterations to the design element of registered mark insufficient to change the commercial impression created by the mark).

See TMEP §807.14(a) regarding amendments to delete matter from a drawing, TMEP §807.14(b) regarding the addition or deletion of previously registered matter, TMEP §807.14(c) regarding the addition or deletion of punctuation, TMEP §§1202.02–1202.02(f)(ii) regarding registration of trade dress marks, TMEP §§1202.02(c)(i)–1202.02(c)(i)(C) regarding drawings in trade dress applications, and TMEP §§1215.08–1215.08(b) regarding material alteration in marks comprised, in whole or in part, of domain names.

807.14(a)    Removal or Deletion of Matter from Drawing

An applicant may request deletions from the mark on the drawing, and the examining attorney may approve the request if he or she believes the deletions are appropriate and would not materially alter the mark.   See 37 C.F.R. §2.72.

Deletion of matter from the mark can result in a material alteration.   In re Dillard Dep't 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 of a registered mark).  However, nondistinctive matter may be deleted, if it does not constitute a material alteration.  For example, the deletion of the generic name of the goods or services would not generally be considered a material alteration, unless it was so integrated into the mark that the deletion would alter the commercial impression.  In some circumstances, nondistinctive matter may be deleted if the overall commercial impression is not altered.  Also, deletions of matter determined to be unregistrable under §§2(a) or 2(b) of the Act, 15 U.S.C. §§1052(a)  or (b), are sometimes permissible. See TMEP §§1203–1203.03(c)(iii) regarding refusal under §2(a) of matter that is immoral, scandalous, disparaging, or creates false suggestion of connection, and TMEP §§1204–1204.05 regarding refusal under §2(b) of marks that comprise flag, coat of arms, or other insignia of the United States, of any state or municipality, or of any foreign nation.

If a specimen shows that matter included on a drawing is not part of the mark, the examining attorney may require that such matter be deleted from the mark on the drawing, if the deletion would not materially alter the mark.  See In re Sazerac Co., 136 USPQ 607 (TTAB 1963) and cases cited therein.

The symbols "TM," "SM," and the registration notice ® must be deleted from the drawing.

Informational matter, such as net weight and volume statements, lists of contents, addresses, and similar matter, should also be deleted from the mark, unless it is truly part of a composite mark and the removal of this matter would alter the overall commercial impression.  If unregistrable matter, including informational matter and the name of the goods, is incorporated in a composite mark in such a way that its removal would change the commercial impression of the mark or make it unlikely to be recognized, the matter may remain on the drawing and be disclaimed.  See TMEP §1213.03(b) regarding disclaimer of such matter.  However, this type of matter rarely is part of a composite mark.

Functional matter that is part of an otherwise registrable three-dimensional trade dress mark may also be removed or deleted from the drawing by depicting that matter in broken or dotted lines.  Since functionality is an absolute bar to registration on the Principal Register or the Supplemental Register, features of a trade dress mark that are deemed functional under trademark law are never capable of acquiring trademark significance and are not registrable.  Therefore, such removal or deletion of the functional features generally will not be considered a material alteration of the mark, regardless of the filing basis of the application.  See TMEP §§1202.02(a)–(a)(viii) regarding functionality, and TMEP §1202.02(c)(i)(A) regarding functional matter on drawings in trade dress applications.

See TMEP §807.14(b) regarding addition or deletion of previously registered matter.

807.14(b)    Addition or Deletion of Previously Registered Matter

Addition.  An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted.  The rationale is that "[t]he addition of applicant’s well-known registered mark to the mark sought to be registered . . . is not a material change which would require republication of the mark."   Florasynth Labs., Inc. v. Mülhens, 122 USPQ 284, 284 (Comm’r Pats. 1959) (addition of applicant’s previously registered mark 4711 to the mark ELAN held not a material alteration).  However, the addition of matter that the applicant has previously registered for different goods or services is not permissible.  In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1886 (TTAB 1988).  An amendment adding previously registered matter is also unacceptable if it substantially alters the original mark.   In re John LaBatt Ltd., 26 USPQ2d 1077, 1078 (Comm’r Pats. 1992) ("Here, the applicant does not seek to merely add an element from one registration to another.  Rather, the applicant seeks to eliminate its original mark, and substitute another.  The exception to the material alteration rule clearly does not encompass cases where the original mark disappears.").

Deletion.  The question of whether a proposed amendment to delete previously registered matter from a mark is a material alteration should be determined without regard to whether the matter to be deleted is the subject of an existing registration.

807.14(c)    Addition or Deletion of Punctuation

Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.  See, e.g., In re Litehouse, Inc., 82 USPQ2d 1471, 1474 (TTAB 2007) and cases cited therein (finding the mark CAESAR!CAESAR! to be merely descriptive and noting that "neither the mere repetition of the word CAESAR . . . nor the presence of the exclamation points in the mark, nor both of these features combined, suffices to negate the mere descriptiveness of the mark as a whole");   see also In re Promo Ink, 78 USPQ2d 1301, 1305 (TTAB 2006) (finding the mark PARTY AT A DISCOUNT! to be merely descriptive, specifically noting that "[t]his punctuation mark does not significantly change the commercial impression of the mark.  It would simply emphasize the descriptive nature of the mark to prospective purchasers . . .").

However, in rare cases, punctuation may be incorporated into a mark in such a way that the commercial impression of the mark would be changed by the addition or deletion of such punctuation.   See In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1748 (TTAB 2012) (finding "the proposed addition of a question mark to the mark ‘GOT STRAPS’ constitutes a material alteration because it changes the commercial impression of the original mark from a declaratory statement to an interrogative phrase"); Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm’r Pats. 1974), overruled on other grounds, In re Umax Data Sys., Inc., 40 USPQ2d 1539 (Comm'r Pats. 1996) (proposed change of FYE[R-W]ALL and design to FYER-WALL in block letters denied as material alteration, in part, because brackets changed commercial impression of mark as the initial letters of applicant’s name, "R" and "W," were no longer emphasized).  For example, unlike most cases where the addition of an exclamation point does not affect the commercial impression of a mark, the addition of an exclamation point to the mark MOVE IT transforms the words from a mere command to relocate an object to an exclamatory statement with more than one meaning – MOVE IT! – often used to order a person out of the way, and, therefore, changes the commercial impression of the mark.

Some other examples, though not exhaustive, are:

  • the addition or deletion of a question mark, which changes a statement into a question or vice versa ( see In re Guitar Straps Online, 103 USPQ2d at 1748);
  • the addition or deletion of spaces between the syllables of a term, which may change the commercial impression created by the separate syllables or the unitary word; and
  • the addition or deletion of a period before the term ".com," which can change wording to or from a website address.

See also TMEP §807.12(a)(i)–(iii) regarding the role of punctuation in determining whether the mark on the drawing agrees with the mark on the specimen.

807.14(d)    Amendments to Correct "Internal Inconsistencies"

The USPTO 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.  37 C.F.R. §2.72(a)(2), (b)(2), (c)(2).

Prior to October 30, 1999, in certain limited circumstances, the USPTO would accept an amendment that corrected an "internal inconsistency" in an application as originally filed, without regard to the issue of material alteration.  Because 37 C.F.R. §2.72(b), (c), and (d)  did not expressly prohibit an amendment that materially altered the mark on the original drawing, the USPTO would accept an amendment to correct an "internal inconsistency," even if the amendment materially altered the mark on the original drawing.  An application was considered "internally inconsistent" if the mark on the original drawing did not agree with the mark on the specimen in an application based on use, or with the mark on the foreign registration in an application based on §44 of the Act.   See In re ECCS Inc., 94 F.3d 1578, 1581, 39 USPQ2d 2001, 2004 (Fed. Cir. 1996); In re Dekra e.V., 44 USPQ2d 1693, 1695-96 (TTAB 1997).

Effective October 30, 1999, 37 C.F.R. §2.72  was amended to prohibit amendments that materially alter the mark on the drawing filed with the original application.  Furthermore, 37 C.F.R. §2.52  was amended to state that the "drawing depicts the mark sought to be registered."  Accordingly, the USPTO no longer accepts amendments to cure "internal inconsistencies," if these amendments materially alter the mark on the original drawing. See In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1217 (TTAB 2000) ; 57 USPQ2d 1211, 1217 (TTAB 2000); see also In re Tetrafluor Inc., 17 USPQ2d 1160, 1162 (Comm'r Pats. 1990) (finding examining attorney properly refused to accept amendment to "correct a typographical error" that materially altered mark on original drawing page).

If a paper application includes a separate drawing page showing a mark, and a different mark appears in the written application, the drawing controls for purposes of determining what the mark is.   In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063, 1064 (Dir USPTO 2001); see TMEP §§202.01, 807.01.  Similarly, if an applicant enters a standard character mark, or attaches a digitized image of a mark, in the "Mark" field on a TEAS application, and a different mark appears in another field, the mark entered in the "Mark" field will control for purposes of determining what the mark is.  The applicant may not amend the mark if the amendment is a material alteration of the mark on the drawing.

For example, if the applicant submits a drawing page showing the word mark "ABC and design," the applicant may not amend the application to delete the wording "and design," and add a design feature to the letters "ABC."  However, the applicant may amend the drawing to "ABC."  See In re Meditech Int’l Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (finding mark comprised of a design of a blue star to be a material alteration of the typed words "DESIGN OF A BLUE STAR").

807.14(e)    Amendments to Color Features of Marks

If a proposed amendment to a color feature of a mark does not change the commercial impression of the mark, the amendment is unlikely to have an adverse impact on public notice.  In such cases, the mark need not be republished, and the proposed amendment would not be deemed a material alteration.

Whenever a proposed color amendment is refused as a material alteration, the examining attorney must clearly explain why the proposed amendment changes the meaning or overall impression of the mark, or impacts the likelihood of confusion analysis.

807.14(e)(i)    Black-and-White Drawings

The amendment of a black-and-white special form drawing to one claiming a color(s) as a feature of the mark generally does not constitute a material alteration.

If a mark is initially depicted in a black-and-white special form drawing in which no color is claimed, the drawing is presumed to contemplate the use of the mark in any color, without limitation.  See, e.g., In re Data Packaging Corp., 453 F.2d 1300, 1302, 172 USPQ 396, 397 (C.C.P.A. 1972).  The amendment of the black-and-white drawing to one claiming a particular color as a feature of the mark is, therefore, a restriction or limitation of the applicant’s rights.

807.14(e)(ii)    Marks that Include Color and Other Elements

The extent to which color contributes to the commercial impression created by a mark is often determined by the type of mark in question (i.e., word mark, design mark, or trade dress).  In some cases, color may play only an incidental or insignificant part in creating the commercial impression of a mark, such as the color lettering of a word mark.  In other cases, color is the only feature of the mark that creates a commercial impression, such as where the mark consists only of color(s) applied to goods or their packaging, or to articles used in the sale or advertising services.

Word Marks

In general, the addition, deletion, or amendment of color lettering in a word mark does not result in a material alteration of the mark.

Word marks may appear as stylized marks in color lettering.  With the possible exception of generic wording, as discussed below, the literal portions of word marks are likely to be the dominant portions that create the greatest commercial impression.   See Inter-State Oil Co. v. Questor Corp., 209 USPQ 583, 586 (TTAB 1980) .  In most cases, the color in the lettering is unlikely to have a significant impact on the commercial impression created by the mark.

Exception – Generic Terms.  Generic terms are incapable of functioning as marks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register.  However, if the generic wording appears in color lettering, the color portion may be capable of functioning as a source indicator.  See, e.g., Courtenay Commc'ns Corp., v. Hall, 334 F.3d 210, 216, 67 USPQ2d 1210, 1214 (2nd Cir. 2003) and cases cited therein ("There are many examples of legally protected marks that combine generic words with distinctive lettering, coloring, or other design elements.").  With respect to such generic word marks, the color element of the wording is likely to be the more dominant portion in creating the commercial impression of the mark.  Therefore, in cases where the entire literal portion is generic, a proposed amendment to the color portion of the word mark generally would be a material alteration.

Design Marks

In general, the addition, deletion, or amendment of color features in a design mark does not result in a material alteration of the mark.

In a color design mark, the design portion is likely to be the most dominant portion of the mark in creating a commercial impression.  Although the color portion is part of the mark, it only appears in the context of the design and is not a separable element.  The color portion is, therefore, less likely than the design portion to play a significant role in likelihood of confusion or trademark selection considerations.  For example, the fact that two different designs, such as a red hat design and a red boat design, may appear in identical colors is unlikely to result in a finding of likelihood of confusion.  In contrast, if two boat designs are identical in stylization, it is likely that the designs would be held to be confusingly similar regardless of any differences in their respective colors.

Exception - Color Impacts the Meaning or Significance of the Mark.  An amendment that causes the mark to have a new meaning or significance in the context of the goods or services is likely to be a material alteration.  For example, the amendment of a blue colored drop for "spring water," which looks like a rain drop, to a red drop, which looks like blood, would likely be a material alteration because the change in the color of the drop has altered the meaning or commercial impression of the mark.  An amendment of a rainbow design, consisting of an arc with a spectrum of colors, to a black or solid-colored arc, would be a material alteration, regardless of the goods or services, because the amended mark is just an arc and is no longer identifiable as a rainbow.

Exception – Color is the Dominant Portion of the Mark.  Generally, if the color portion to be amended constitutes the dominant or most significant part of the entire mark, it becomes more likely that the proposed color amendment is a material alteration.  For example, if the design mark consists solely of a common geometric shape, the color element is likely to be the dominant element of the mark.  As a result, amending the color of a common geometric shape is likely to be a material alteration.

Another factor to consider in assessing the dominance of the color element of the mark is the size or prominence of the color design or graphic element to be amended in proportion to the rest of the mark.  For example, if it is clear that the mark consists of the overall color scheme of a product’s trade dress, such as the product package or container, an amendment to a particular color element that is small or insignificant in proportion to the entire mark is unlikely to be a material alteration.  Conversely, an amendment to a color element that is large in proportion to the entire mark, or is a dominant element of the overall color scheme, is more likely to be a material alteration.  For example, if a mark consists solely of the color scheme or pattern of a package or container that is equally divided into two colors, amending one or both colors is more likely to be a material alteration.

807.14(e)(iii)    Color Marks

The amendment of any color in a color mark is a prohibited material alteration.

Color marks are marks that consist solely of one or more colors used on particular objects or substances as a source identifier (as opposed to marks that include color in addition to other elements).   See TMEP §§1202.05–1202.05(i).  Color marks generally appear in a drawing with the outline or configuration of the goods on which they appear to show the placement of the color mark.  However, the shape or configuration of the goods is not part of the mark.  The mark is comprised solely of the color as applied to the object or substance, in the manner depicted and described, so that changing or amending the color of the mark would always change the entire commercial impression created by the mark.

An amendment of the mark to show the same color on a different object is also generally a material alteration (e.g., an amendment of a drawing of a blue hammer to a blue saw).  A color takes on the characteristics of the object to which it is applied, and the commercial impression of a color may change depending on the object to which it is applied.   See In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) ("[A] word mark retains its same appearance when used on different objects, but color is not immediately distinguishable as a service mark when used in similar circumstances."); In re Hayes, 62 USPQ2d 1443, 1445 (TTAB 2002) ; TMEP §1202.05(c).

See TMEP §807.07(e) regarding black-and-white drawings in an application that includes a color claim, and TMEP §807.07(c) regarding incorrect color claims.

807.14(f)    Material Alteration:  Case References

Proposed amendments to marks were found to be material alterations in the following decisions:   In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001) (finding amendment describing a mark as the color blue applied to an unlimited variety of objects 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) (finding proposed addition of house mark to conform to mark on foreign registration to be a material alteration of the mark on the drawing filed with original application); In re Guitar Straps Online, LLC, 103 USPQ2d 1745 (TTAB 2012) (finding proposed amendment from "GOT STRAPS" to "GOT STRAPS?" to be a material alteration); In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (TTAB 2000) (finding proposed amendment from "TACILESENSE" to "TACTILESENSE" to be a 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) (finding addition of wording "MR. SEYMOUR" to design mark to be a material alteration); In re The Wine Soc’y of Am., Inc., 12 USPQ2d 1139 (TTAB 1989) (finding 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" to be a material alteration); In re Nationwide Indus., Inc., 6 USPQ2d 1882 (TTAB 1988) (finding addition of house mark "SNAP" to product mark "RUST BUSTER" to be a material alteration); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986) (finding addition of house mark "PIERCE" to "CHIK’N BAKE" to be a material alteration).

Proposed amendments to marks were found not to constitute a material alteration in the following cases:   Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1370, 116 USPQ2d 1129, 1133-34 (Fed. Cir. 2015) (holding minor adjustment to the font and alterations to the design element of registered mark insufficient to change the commercial impression created by the mark); In re Innovative Cos., LLC, 88 USPQ2d 1095 (TTAB 2008) (finding amendment from "FREEDOMSTONE" to "FREEDOM STONE" not to be a material alteration); Paris Glove of Can., Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1862 (TTAB 2007) (finding "AQUASTOP" depicted on one line in semicircular form not to be a material alteration of "AQUA STOP" depicted on two lines in rectangular form; the Board explained 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) (finding "NEW YORK JEWELRY OUTLET" not to be a material alteration of "NY JEWELRY OUTLET"); In re Larios, S.A., 35 USPQ2d 1214 (TTAB 1995) (finding "VINO DE MALAGA LARIOS" and design not to be a material alteration of "GRAN VINO MALAGA LARIOS" with similar design); Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740 (TTAB 1983) (finding amendment inverting the design portion of the mark not to be a material alteration).