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).
Further, an amendment adding previously registered matter is also unacceptable if it substantially alters the original mark. In re Greenwood, 2020 USPQ2d 11439, at *9 (TTAB 2020) (finding proposed amendment adding applicant’s previously registered mark THE LEE GREENWOOD COLLECTION to GOD BLESS THE USA to be a material alteration because it "drastically alter[ed] the proposed mark's meaning and commercial impression, moving it from a platitudinous well-wishing to a singer's claimed signature song"). An applicant’s ownership of a previously registered mark is just one of the factors to be considered when determining whether an alteration is material. Id. (citing In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990) ("The question of whether a new search is necessitated by the amendment is a factor to be considered but is not the determining element of whether or not to accept the amendment"); In re John LaBatt Ltd., 26 USPQ2d 1077, 1078 (Comm’r 1992) ("Whether republication would be required is only one consideration in the determination of whether a mark has been materially changed.")). "The crucial question is whether the old and new forms of the mark create essentially the same commercial impression." In re Greenwood, 2020 USPQ2d 11439, at *8 (citing Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740,743-44 (TTAB 1983); In re Guitar Straps Online, LLC, 103 USPQ2d 1745, 1747 (TTAB 2012)).
The determination of whether a proposed amendment creates essentially the same commercial impression as the original mark is evaluated from the viewpoint of the ordinary consumer. In re Greenwood, 2020 USPQ2d 11439, at *8. As the TTAB explained in Greenwood:
These [ordinary] consumers, unfamiliar with registrations on the Principal Register, may see an applicant's addition of his previously registered matter as a significant change from the mark as originally filed. Indeed, an applicant may own scores of previously registered marks, any one of which could be appended to the root mark as originally filed. The mark as originally filed could thereby serve as a placeholder for later amendments bearing little resemblance to the mark as originally filed.
2020 USPQ2d 11439, at *8-9.
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.