In an application under §1 of the Trademark Act, the mark on the drawing must be a complete mark, as evidenced by the specimen. When the representation on a drawing does not constitute the complete mark, it is sometimes referred to as a "mutilation" of the mark. This term indicates that essential and integral subject matter is missing from the drawing. An incomplete mark may not be registered. See In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); In re Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999) ; In re Boyd Coffee Co., 25 USPQ2d 2052 (TTAB 1993); In re Semans, 193 USPQ 727 (TTAB 1976); see also Institut Nat’l Des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1582, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992) (citing J. Thomas McCarthy,Trademark & Unfair Competition (2d. ed. 1984) §19:17).
However, in a §1 application, an applicant has some latitude in selecting the mark it wants to register. The mere fact that two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes. An applicant may apply to register any element of a composite mark if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen, i.e., the element performs a trademark function in and of itself. See, e.g., In re Univ. of Miami, 123 USPQ2d 1075, 1079 (TTAB 2017) (finding that the depiction of the mark in the drawing as a personified ibis wearing a hat and sweater created a separate and distinct commercial impression from literal elements that appeared on the hat and sweater in the specimens of use and thus the mark drawing was a substantially exact representation of the mark as used). "A mark creates a separate and distinct commercial impression if it is not ‘so entwined (physically or conceptually) with other material that it is not separable from it in the mind of the consumer.’" In re MN Apparel LLC, 2021 USPQ2d 535, at *10-11 (TTAB 2021) (citing In re Yale Sportswear Corp., 88 USPQ2d 1121, 1123 (TTAB 2008)).
In a §44 application, the standard is stricter. TMEP §1011.01. The drawing in the U.S. application must display the entire mark as registered in the country of origin. The applicant may not register part of the mark in the foreign registration, even if it creates a distinct commercial impression.
In any application, if registration is refused on the ground that the mark on the drawing does not agree with the mark as shown on the specimen or foreign registration, the applicant may not amend the drawing if the amendment would materially alter the mark on the original drawing. 37 C.F.R. §2.72; TMEP §§807.14–807.14(f), 1011.01.
This issue will not arise in a §66(a) application, because the IB includes a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States. The mark in a §66(a) application cannot be amended. TMEP §807.13(b).
In the following cases, an element of a composite mark was found not to present a separate and distinct commercial impression apart from any other matter with which the mark was or would be used on the specimen: Chem. Dynamics, 839 F.2d at 1569, 5 USPQ2d at 1828 (registration of design of medicine dropper and droplet properly refused, where the proposed mark is actually used as an integral part of a unified mark that includes a design of a watering can, and does not create a separate commercial impression); In re Lorillard Licensing Co., 99 USPQ2d 1312 (TTAB 2011) (finding that the drawing was not a substantially exact representation of the proposed mark, an orange-and-green color combination for the packaging of cigarettes, as appearing on the specimen); In re Pharmavite LLC, 91 USPQ2d 1778 (TTAB 2009) (mark comprised of the design of two bottles properly refused, finding that it does not create a separate and distinct commercial impression apart from the mark shown on the specimen and further that it is not a substantially exact representation of the mark shown on the specimen); In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) (refusing registration of the mark UPPER 90, finding that it does not form a separate and distinct commercial impression apart from the degree symbol that appears on the specimen); Miller Sports, 51 USPQ2d at 1059 (mark comprising the letter "M" and skater design properly refused, where the "M" portion of applicant’s "Miller" logo is so merged in presentation with remainder of logo that it does not create a separate commercial impression); Boyd Coffee, 25 USPQ2d at 2052 (mark comprising cup and saucer design properly refused as mutilation of mark actually used, which includes the cup and saucer design as well as a sunburst design, since the cup and saucer design does not create a separate and distinct commercial impression apart from the sunburst design); In re Sperouleas, 227 USPQ 166 (TTAB 1985) (torch design unregistrable apart from wording SOCRATES DELIGHT that appears on specimen, where the words are not only prominent but are also physically merged with the design, such that the design does not make a separate commercial impression); In re Volante Int’l Holdings,196 USPQ 188 (TTAB 1977) (mark consisting of a design of a double-headed girl, a dragon, and a tree is not a substantially exact representation of the mark actually used, which incorporates the visually inseparable and intertwined term "VIRGIN"); In re Library Rest., Inc., 194 USPQ 446 (TTAB 1977) (the words "THE LIBRARY" are so intimately related in appearance to other elements of the mark actually used that it is not possible to conclude that the pictorial features by themselves create a separate commercial impression); Semans, 193 USPQ at 727 (the mark KRAZY, displayed on the specimen on the same line and in the same script as the expression "MIXED-UP," does not in itself function as a registrable trademark apart from the unitary phrase "KRAZY MIXED-UP"); In re Mango Records, 189 USPQ 126 (TTAB 1975) (the typed mark MANGO is so uniquely juxtaposed with the pictorial elements of the composite that it is not a substantially exact representation of the mark as used on the specimen and does not show the mark in the unique manner used thereon).
An element of a proposed mark was found to create a separate commercial impression in the following cases: In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (C.C.P.A. 1950) (reversing refusal to register the mark SERVEL as a mutilation of "SERVEL INKLINGS", where the specimen displays an insignia between the words "SERVEL" and "INKLINGS," and "INKLINGS" is printed in a large and different kind of type); In re MN Apparel LLC, 2021 USPQ2d 535, at *10 (reversing refusal to register MOSTLY MN ONE WITH EVERYTHING where the specimen shows applicant’s house mark or trade name "MN Apparel" appearing with the applied-for mark but separated by a hyphen or an entire sentence, which is sufficient to create a separate commercial impression); In re Frankish Enters. Ltd., 113 USPQ2d 1964, 1974 (TTAB 2015) (finding three-dimensional design of monster truck body creates a commercial impression as an indication of origin separate and apart from wording and additional markings displayed on truck body as part of the specimen); In re Royal BodyCare Inc., 83 USPQ2d 1564 (TTAB 2007) (reversing refusal to register NANOCEUTICAL, finding that the term is actually used in a manner that creates a commercial impression separate and apart from the house mark or trade name "RBC’s"); In re Big Pig, Inc.,81 USPQ2d 1436 (TTAB 2006) (PSYCHO creates a separate commercial impression apart from additional wording and background design that appears on the specimen, where the word "PSYCHO" is displayed in a different color, type style and size, such that it stands out); In re 1175856 Ont. Ltd., 81 USPQ2d 1446 (TTAB 2006) (reversing refusal to register WSI and globe design, since the letters "WSI" and globe design create a separate commercial impression apart from a curved design element that appears on the specimen); In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (reversing refusal to register TINEL-LOCK as mutilation of mark "TRO6AI-TINEL-LOCK-RING," noting that part or stock number does not usually function as a source identifier, and the "fact that hyphens connect both the part number and the generic term to the mark does not, under the circumstances presented in this case, create a unitary expression such that ‘TINEL-LOCK’ has no significance by itself as a trademark."); In re Nat'l Inst. for Auto. Serv. Excellence,218 USPQ 744, 745 (TTAB 1983) (design of meshed gears "is distinctive in nature" and "creates a commercial impression separate and apart from the words superimposed thereon"); In re Schecter Bros. Modular Corp.,182 USPQ 694 (TTAB 1974) (where specimens show mark consisting in part of "RAINAIRE" together with its shadow image, it is not a mutilation of mark to delete shadow image from drawing since "RAINAIRE" creates the essential impression); In re Emco, Inc., 158 USPQ 622 (TTAB 1968) (reversing refusal and concluding that the law and the record supported applicant’s position that RESPONSER is registrable without addition of the surname "MEYER").
See TMEP §807.14(c) regarding the effect of the addition or deletion of punctuation on the commercial impression of the mark.
Like any other drawing, a drawing of a compound word mark or telescoped mark must be a substantially exact representation of the mark as it appears on the specimen in a §1 application or on the foreign registration in a §44 application.
A compound word mark is comprised of two or more distinct words, or words and syllables, that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, PULSAIR). Often, each word or syllable in a compound word mark is displayed or highlighted by: (1) capitalizing the first letter of each word or syllable (e.g., TimeMaster); or (2) presenting the words or syllables in a different color, script, or size (e.g., RIBtype).
If the drawing depicts the mark as a compound word mark, but the specimen shows the mark as two separate words, or vice versa, the examining attorney must determine whether the mark on the drawing is a substantially exact representation of the mark on the specimen and/or whether an amendment of the drawing would be a material alteration of the mark. See In re Innovative Cos., 88 USPQ2d 1095 (TTAB 2008) (FREEDOMSTONE not a substantially exact representation of FREEDOM STONE, but amendment of FREEDOMSTONE to FREEDOM STONE not deemed a material alteration). For example, if the drawing depicts the mark as BOOKCHOICE, but the specimen shows it as BOOK CHOICE, the mark on the drawing is not a substantially exact representation of the mark on the specimen. An amendment of the drawing would not be a material alteration. However, depending upon the nature of the goods/services, a disclaimer might be required. Note that a specimen showing the mark as BookChoice would be a substantially exact representation.
A telescoped mark is comprised of two or more words that share letters (e.g., SUPERINSE). A telescoped word must be presented as a unitary term with the letters shared. The telescoped element may not be represented as two words, because the shared letter is an aspect of the commercial impression, (e.g., SUPERINSE, not SUPE RINSE or SUPER RINSE).
See TMEP §§1213.05(a)–1213.05(a)(ii) regarding disclaimers in telescoped and compound word marks.
Section 1(a) Application. The mark in an application under §1(a) of the Trademark Act can be amended if the specimen supports the amendment and the amendment does not materially alter the mark. 37 C.F.R. §2.72(a). See TMEP §§904–904.07(b) and 1301.04–1301.04(d) regarding specimens, and TMEP §§807.14–807.14(f) regarding material alteration.
Section 1(b) Application. The mark in an application under §1(b) of the Trademark Act can be amended if the specimen filed with an amendment to allege use or statement of use supports the amendment, and the amendment does not materially alter the mark. 37 C.F.R. §2.72(b). See TMEP §§904–904.07(b) and 1301.04–1301.04(d) regarding specimens, TMEP §§1104–1104.11 regarding amendments to allege use, TMEP §§1109–1109.18 regarding statements of use, and TMEP §§807.14–807.14(f) regarding material alteration.
Section 44 Application. The mark in an application under §44 of the Trademark Act can be amended if the mark in the foreign registration certificate supports the amendment, and the amendment does not materially alter the mark. 37 C.F.R. §2.72(c). See TMEP §1011.01 regarding the requirement that the mark on the drawing in a §44 application be a substantially exact representation of the mark as it appears in the foreign registration certificate, and TMEP §§807.14–807.14(f) regarding material alteration.
The Madrid Protocol and the Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 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 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, as the case may be . . . .
Accordingly, because an application under §66(a) of the Trademark Act is part of the international registration, 37 C.F.R. §2.72 makes no provision for amendment of the mark in a §66(a) application, and the USPTO will not permit any such amendments. TMEP §1904.02(j); see 68 Fed. Reg. 55748, 55756 (Sept. 26, 2003).
Exceptions: Non-material informational matter that appears on the international registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing. Additionally, in limited circumstances, a standard character claim may be added to a §66(a) application. See TMEP §807.03(h).
However, the applicant must comply with U. S. requirements regarding drawings and descriptions of the mark. TMEP §1904.02(k).
Similarly, after registration, a registrant generally cannot amend under §7 of the Trademark Act a mark in a registered extension of protection, except to add a standard character claim if the registered mark complies with the requirements of 37 C.F.R. §2.52(a)(1)–(5). TMEP §1609.02. See TMEP §1609.01(a) regarding additional, limited amendments permitted in a registered extension of protection.
See TMEP §1904.03(f) and §1904.14 regarding notifications of corrections in the International Register with respect to pending §66(a) applications and registered extensions of protection.
Trademark Rule 2.72, 37 C.F.R. §2.72, prohibits any amendment of the mark or mark description in an application under §1 or §44 of the Trademark Act that materially alters the mark as originally filed. A determination of whether a proposed amendment materially alters the mark is made by comparing the proposed amendment with the description or drawing of the mark in the original application. 37 C.F.R. §§2.72(a)(2), (b)(2), (c)(2).
When comparing the proposed amendment with the original mark, the test for determining 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)); see In re Thrifty, Inc., 274 F.3d 1349, 1352-53, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001). This test applies to both an amendment of the description of a mark and an amendment of the mark on a drawing. See In re Thrifty, Inc., 274 F.3d at 1353-54, 61 USPQ2d at 1124.
Although the general test refers to republication, it also applies to amendments to marks proposed before publication. See In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1219 (TTAB 2000). 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.
Generally, the addition of any element that would require a further search will also constitute a material alteration. In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986). However, whether a new search would be required is merely one factor to be considered in deciding whether an amendment would materially alter a mark; it is not necessarily the "controlling" factor. In re Guitar Straps Online, LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Who? Vision Sys., Inc., 57 USPQ2d at 1218-19 .
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." In re Greenwood, 2020 USPQ2d 11439, at *8 (TTAB 2020) (citing Visa Int’l Serv. Ass’n, 220 USPQ at 743-44; In re Guitar Straps Online, LLC, 103 USPQ2d at 1747); 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, §807.14(b) regarding the addition or deletion of previously registered matter, §807.14(c) regarding the addition or deletion of punctuation, §§1202.02(c)(i)–1202.02(c)(i)(C) regarding drawings in trade dress applications, and §§1215.08–1215.08(b) regarding material alteration in marks comprised, in whole or in part, of domain names.
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),(b), are sometimes permissible. See TMEP §§1203–1203.03(b)(iii) regarding refusal under §2(a) of matter that is immoral, scandalous, 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 §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.
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.
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:
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.
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) ; 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 an applicant enters a standard character mark or attaches a digitized image of a mark in the "Mark" field on the TEAS application, and a different mark appears in another field in the application, the mark entered in the "Mark" field will control for purposes of determining what the mark is. Similarly, if a permitted 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, §301.01, and §807.01. 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's standard character mark comprises the text "ABC and design," the applicant may not amend the application to both (1) delete the wording "and design" and (2) add a design feature to the letters "ABC." However, the applicant may amend the drawing to the standard characters "ABC" only, with the wording "and design" deleted. 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").
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.
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.
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 (2d 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.
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 §807.07(c) regarding incorrect color claims.
