1202.19(c) Material Alteration of Repeating-Pattern Marks
1202.19(c)(i) Amending the Drawing to Depict a Different Object
Generally, when the original drawing depicts the repeating pattern appearing on a particular object, amending the drawing to show the pattern appearing on a significantly different object will be considered a material alteration. Thus, if the original drawing shows the repeating pattern appearing on the outer surface of a purse, for example, it may not be amended to show the mark appearing on the handle of a walking cane.
However, if the mark will appear in a similar manner on similar items, so that a depiction of only one of the items is a substantially exact representation of the mark as used on all of the items, the applicant may amend the drawing from a depiction of one of the items to a depiction of another of the items, assuming the shape of the items is not claimed as a feature of the mark and the specimen of use or foreign registration certificate supports the amendment. See 37 C.F.R. §2.72; TMEP §807.13. For instance, it would not be a material alteration to amend a drawing that shows the pattern appearing on the handle of a spoon shown in broken lines to show the pattern on the handle of a fork shown in broken lines. However, any item depicted in the drawing must be consistent with the identification of goods or services. See TMEP §1202.19(f).
1202.19(c)(ii) Amending a Swatch-Type Drawing to Show an Object and Vice Versa
When the original drawing is a swatch-type drawing showing the elements of the pattern within a square, rectangle, or other generic geometric shape (see TMEP §1202.19(a)(iii)), the drawing may be amended to show the pattern appearing on a particular item, if necessary and otherwise appropriate. See TMEP §807.13. However, amending from a drawing showing the pattern on a particular object to a swatch-type drawing usually will be a material alteration, especially when the elements comprising the pattern are nondistinctive.
1202.19(c)(iii) Amending the Drawing to Depict a Different Placement of the Repeating Pattern
When the original drawing shows the repeating pattern displayed in a particular manner on an object, amending the drawing to show the pattern being displayed in a significantly different manner on the same object may be a material alteration. For instance, a drawing that shows the repeating pattern on the outer bill of a baseball cap may not be amended to show the pattern on the inner lining of the cap. However, a minor change to the placement of a repeating pattern on an object should not be considered a material alteration.
1202.19(c)(iv) Amending Descriptions of Repeating-Pattern Marks
An applicant may not amend a mark description if the amendment would describe a materially different mark than what was depicted in the original drawing. See 37 C.F.R. §2.72; In re Thrifty Inc. 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) (finding applicant’s proposed amendment to the mark description was a material alteration of the drawing because the "multiple impressions created by the wide variety of objects sought to be covered under the proposed description differ significantly from the original mark of a color placed on a building").
For applications in which the original drawing is a swatch-type drawing (see TMEP §1202.19(a)(iii)) and the original mark description indicates that the pattern is used a variety of ways, an applicant may amend the mark description to indicate that the pattern appears in a particular manner on a particular item, in accordance with a corresponding drawing amendment. These amendments are not considered material alterations. In these instances, the applicant may also be required to amend the identification of goods or services to delete any items that are inconsistent with the drawing. See TMEP §1202.19(f).
1202.19(c)(v) Amendments in Applications Based on Section 44 or Section 66(a)
For applications based on Section 44 or Section 66(a), any amendments must conform to the rules and procedures governing these types of applications. See, e.g., TMEP §§1011.01 ("substantially exact representation standard" for drawings in §44-based applications), 1011.03 (amendment of drawings in §44-based applications), 1904.02(j) (amendment of marks in §66(a)-based applications), 1904.02(k) (drawings and descriptions in §66(a)-based applications).