1609.02    Amendment of Mark

Mark in Registered Extension of Protection Cannot Be Amended

The holder of a registered extension of protection of an international registration to the United States cannot file a request to amend the mark under §7 of the Trademark Act.  A registered extension of protection remains part of the international registration, and all requests to record changes to such a registration must be filed at the IB.  However, the Madrid Protocol and the Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Regs.) do not permit amendment of the mark in an international registration.  If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application.  The IB’s Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2008) ("Guide to International Registration"), B.II.72.02, provides as follows:

[T]here is no provision for a mark that is recorded in the International Register to be amended in any way, either on renewal or at any other time.  If the holder wishes to protect the mark in a form which differs, even slightly, from the mark as recorded, he must file a new international application.  This is true even if the mark has been allowed to be changed in the basic application, the registration resulting from the basic application or the basic registration....

Therefore, the mark in a registered extension of protection cannot be amended.

Although the mark in a registered extension of protection cannot be amended, in some situations the holder of a registered extension of protection may file a request under §7 of the Trademark Act to add a standard character claim. If the international registration does not indicate that the mark is in standard characters, and the holder seeks to amend the registered extension of protection to add a standard character claim, the Post Registration staff must contact the Supervisor of the Madrid Processing Unit (MPU) via email for instructions on how to proceed. The holder may not add a standard character claim unless the mark meets the United States requirements for a standard character claim, as set forth in 37 C.F.R. §2.52(a). See TMEP §§807.03(a)-(b).

Amendment of Mark in Registration Based on §1 or §44 Application

Under §7(e) of the Trademark Act, 15 U.S.C. §1057(e), upon application by the owner and payment of the prescribed fee, a registration based on an application under §1 or §44 of the Trademark Act may be amended for good cause, if the amendment does not materially alter the character of the mark.  37 C.F.R. §2.173(d).  See TMEP §§807.14-807.14(f) and 1609.02(a) regarding material alteration. A request to add a standard character claim to a mark designated as a typed drawing must be submitted pursuant to §7(e) and meet all of the requirements for an amendment to a registration that involves a change in the mark, including a new drawing, supporting specimen per class, and declaration. See TMEP §§1609.02(b)–(c).

1609.02(a)    Determining What Constitutes Material Alteration of Mark

Section 7(e) of the Trademark Act, 15 U.S.C. §1057(e), prohibits an amendment that materially alters the character of the mark.  "Material alteration" is the standard for evaluating amendments to marks at all relevant stages of processing, both during examination of the application and after registration. See 37 C.F.R. §§2.72, 2.173(d); TMEP §807.14 .

In determining whether a proposed amendment is a material alteration of a registered mark, the USPTO will always compare the proposed amendment to the mark as originally registered.

The general test of whether an alteration is material is whether, if the mark in an application for registration had been published, the change would require republication in order to present the mark fairly for purposes of opposition.  If republication would be required, the amendment is a material alteration.

An amendment of a registered mark is acceptable if the modified mark contains the essence of the original mark (i.e., the mark as originally registered), and the mark as amended creates essentially the same impression as the original mark.   In re Umax Data Sys., Inc., 40 USPQ2d 1539 (Comm’r Pats. 1996).  For example, in marks consisting of wording combined with a design, if the word is the essence of the mark and the design is merely background embellishment or display that is not integrated into the mark in any significant way, the removal or change of the design will not be a material alteration of the mark.   See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953).  On the other hand, if a design is integrated into a mark and is a distinctive feature necessary for recognition of the mark, then a change in the design would materially alter the mark.   See 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); Ex parte Kadane-Brown, Inc., 79 USPQ 307 (Comm’r Pats. 1948) (proposed amendment of "BLUE BONNET" mark to delete a star design and to change the picture of the girl held a material alteration).

When a mark is solely a picture or design, an alteration must be evaluated by determining whether the new form has the same commercial impression as the original mark, i.e., whether the form as altered would be likely to be recognized as the same mark.   See Ex parte Black & Decker Mfg. Co., 136 USPQ 379 (Comm’r Pats. 1963) (proposed amendment to delete circle found to be a material alteration, where the circle was determined to be a prominent element of a design mark).

Marks entirely comprised of words can sometimes be varied as to their style of lettering, size, and other elements of form without resulting in a material alteration of the mark.   See Ex parte Squire Dingee Co., 81 USPQ 258, recon. denied, 81 USPQ 543 (Comm’r Pats. 1949) (amendment from block lettering to script not a material alteration).  However, changing from special form to standard characters, or the reverse, may be a material alteration.   TMEP §807.03(d).

A generic or purely informational term may be deleted if the essence of the mark in appearance or meaning is not changed, but a word or feature that is necessary to the significance of the mark may not be deleted.  Likewise, a unique or prominent design feature may not be deleted.   See In re 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 amendment to block lettering from mark comprising a diamond design surrounding the word "FYER-WALL" with an inverted channel bracket around the letters "RW" held a material alteration).  See TMEP §807.14(a) regarding amendments deleting matter from a mark.

1609.02(b)    New Drawing Required

When applying for an amendment to a registration that involves a change in the mark, the owner of the registration must submit a new drawing displaying the amended mark.  37 C.F.R. §2.173(b)(3).  See TMEP §§807-807.18 regarding drawings.

1609.02(c)    Supporting Specimens and Declaration

The owner of the registration must submit a specimen showing use of the proposed mark as amended for each class specified in the registration, and must include an affidavit or a declaration under 37 C.F.R. §2.20  stating that the specimen was in use in commerce at least as early as the date the §7 amendment was filed.  37 C.F.R. §2.173(b)(3). When requested by the USPTO, additional specimens must be provided. Id. If a single specimen supports multiple classes, the owner may so indicate by specifying which classes the specimen supports, and the Post Registration staff need not require multiple copies of the specimen. The Post Registration staff should make a Note to the File in the record indicating which classes the specimen supports.

One specimen per class showing use of the proposed mark as amended on or in connection with the goods, services, or collective membership organization is required, even if the mark originally registered based on a foreign registration under §44 of the Trademark Act, 15 U.S.C. §1126(e)  or an extension of protection of an international registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a).   See TMEP §1015 regarding the independence of a §44 registration from the underlying foreign registration.

Sometimes, it may be necessary for the USPTO to request additional information in order to properly examine the amendment. In such cases, the USPTO will require the owner to furnish such additional information, specimens, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the §7 amendment. 37 C.F.R. §2.173(b)(4).

See TMEP §§904.03-904.04(c) regarding trademark specimens, §§1301.04-1301.04(j) regarding service mark specimens, §1303.01(a)(i)(C) regarding specimens for collective trademarks and collective service marks, §1304.02(a)(i)(C) regarding specimens for collective membership marks, and §1306.02(a)(i)(B) regarding specimens for certification marks. See also TMEP §611.03(f) regarding who can sign a §7 request to amend the registration.

1609.02(d)    Conforming Amendments

If a registration includes a disclaimer, description of the mark, and/or other miscellaneous statement (e.g., lining or stippling statement (see TMEP §808.01(b)), translation, transliteration, or color claim), any request to amend the registration must also include a request to make any necessary conforming amendments to the disclaimer, description, and/or miscellaneous statement.  37 C.F.R. §2.173(g).  For example, if the mark is "XYZ INC.," with a disclaimer of the entity designator "INC.," and the owner of the registration proposes to amend the mark to remove "INC.," the proposed amendment should also request that the disclaimer be deleted.

If a proposed amendment does not include all necessary conforming amendment(s), the Post Registration staff will issue an Office action requiring the amendment(s).

1609.02(e)    Amendment of Black-and-White Drawing of Mark for Which Color Is Claimed to Substitute Color Drawing

Prior to November 2, 2003, the USPTO did not publish marks or issue registrations in color.  An applicant who wanted to show color in a mark was required to submit a black-and-white drawing, with a statement describing the color(s).   See TMEP §807.07(g).  Effective November 2, 2003, the USPTO accepts color drawings.  Black-and-white drawings with a color claim, or drawings that show color by use of lining patterns, are no longer permitted.  Color drawings must be accompanied by a color claim naming the color(s) that are a feature of the mark, and a separate statement specifying where the color(s) appear(s) on the mark.  37 C.F.R. §2.52(b)(1); TMEP §§807.07(a)-807.07(a)(ii).

In a registration based on an application filed before November 2, 2003, if the application included a black-and-white drawing with a statement claiming color, the owner may file a request under §7 of the Trademark Act to substitute a color drawing for the black-and-white drawing.  The request must include:  (1) a color drawing showing the same colors claimed in the registration; (2) a color claim naming the color(s) that are a feature of the mark; (3) a description of where the color(s) appear(s) in the mark; and (4) the fee required by 37 C.F.R. §2.6.  37 C.F.R. §2.173(a), (b)(1), (g).  No specimen is required if the owner is merely substituting a color drawing for a legally equivalent black-and-white drawing, and is not amending the mark.

1609.02(f)    Amendment of Black-and-White Drawing to Color Drawing

A special form drawing registered in black-and-white may be amended under §7(e) to include a claim of color, as long as the amendment does not constitute a material alteration.   See 37 C.F.R. §2.173(d). Requests to amend the mark to color must include:  (1) a color drawing; (2) a color claim naming the color(s) that are a feature of the mark; (3) a statement specifying where the color(s) appear(s) in the mark; (4) a specimen showing the mark as depicted on the amended drawing; and (5) the fee required by 37 C.F.R. §2.6.  37 C.F.R. §2.173(a), (b)(1), (g).  See TMEP §§807.07-807.07(g) regarding requirements for color drawings and §§807.14(e)-807.14(e)(iii) regarding amendments to color features of marks.

1609.02(g)    Amendment to Special Form Drawing Containing Black, White, and/or Gray

When a mark shown in special form is amended under §7(e), and the mark shown on the new drawing page contains gray, or the description of the mark refers to black, white, and/or gray, the owner must clarify whether the mark is in color.  Specifically, the record must contain either:  (1) a statement that the mark is not in color; or (2) a statement that the colors black, white, and/or gray are features of the mark and a statement specifying the location of the colors.  If not all are claimed as colors, the color location statement must specify that the black/white/gray is not claimed as color and represents background, outlining, shading, and/or transparent areas.

Likewise, if the §7(e) amendment includes a statement that color is claimed as a feature of the mark and the drawing contains black, white, and/or gray, the record must contain one of the following:  (1) a statement that the color(s) black, white, and/or gray are features of the mark and statement specifying the location of the colors; or (2) a statement that the black/white/gray represents background, outlining, shading, and/or transparent areas and is not a part of the mark.  No statement regarding a white background is required if the background of the drawing is white and it is clear that the white background is not part of the mark.

See TMEP §§807.07(f)-807.07(f)(ii) regarding requirements for drawings containing black, white, and/or gray.