The USPTO has detailed information on this at TMEP 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 Service Ass'n v. Life-Code Systems, Inc., 220 USPQ 740,743-44 (TTAB 1983).
Here are some example from the USPTO as to what is a material change
Proposed amendments to marks were held to be material alterations in the following decisions: In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001) (amendment describing a mark as the color blue applied to an unlimited variety of objects found 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) (proposed addition of house mark to conform to mark on foreign registration found to be material alteration of mark on drawing filed with original application); In re Guitar Straps Online, LLC, 103 USPQ2d 1745 (TTAB 2012) (proposed amendment from "GOT STRAPS" to "GOT STRAPS?" found to be a material alteration); In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000) (proposed amendment from "TACILESENSE" to "TACTILESENSE" found to be material alteration);
More examples of material alterations
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-a-vis a drawing consisting of the typed words 'DESIGN OF A BLUE STAR'"); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990) (addition of wording "MR. SEYMOUR" to design mark held material alteration); In re The Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (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" held material alteration); In re Nationwide Industries, Inc., 6 USPQ2d 1882 (TTAB 1988) (addition of house mark "SNAP" to product mark "RUST BUSTER" held material alteration); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986) (addition of house mark "PIERCE" to "CHIK'N-BAKE" held material alteration.)
examples held NOT material alteration
Proposed amendments to marks were found not to constitute a material alteration in the following cases: In re Innovative Companies, LLC, 88 USPQ2d 1095 (TTAB 2008) (amendment from "FREEDOMSTONE" to "FREEDOM STONE"); Paris Glove of Canada, Ltd. v. SBC/Sportco Corp., 84 USPQ2d 1856, 1862 (TTAB 2007) ("AQUASTOP" depicted on one line in semicircular form not material alteration of "AQUA STOP" depicted on two lines in rectangular form; the Board found 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) ("NEW YORK JEWELRY OUTLET" not material alteration of "NY JEWELRY OUTLET");
more examples held NOT material alteration
In re Larios S.A., 35 USPQ2d 1214 (TTAB 1995) ("VINO DE MALAGA LARIOS" and design not material alteration of "GRAN VINO MALAGA LARIOS" with similar design); Visa Int'l Service Ass'n v. Life-Code Systems, Inc., 220 USPQ 740 (TTAB 1983) (amendment inverting the design portion of the mark held not a material alteration).
Our Rating is calculated using information the lawyer has included on their profile in addition to the information we collect from state bar associations and other organizations that license legal professionals. Attorneys who claim their profiles and provide Avvo with more information tend to have a higher rating than those who do not.
What determines Avvo Rating?
Experience & background
Years licensed, work experience, education
Legal community recognition
Peer endorsements, associations, awards
Legal thought leadership
Publications, speaking engagements
This lawyer was disciplined by a state licensing authority in .
Disciplinary information may not be comprehensive, or updated. We recommend that you always check a lawyer's disciplinary status with their respective state bar association before hiring them.