Last time, we talked about making voluntary amendments to trademark applications (i.e., not in response to office actions). One of the most common reasons to submit a voluntary amendment is to fix clerical errors - for example, to correct misspellings in a mark. While these types of amendments may seem like no big deal, it is important to be aware that the amendments may not be accepted by the USPTO.
Generally, an amendment to a mark will not be accepted if the change materially alters the mark. See 37 C.F.R. §2.72; TMEP §807.14. To determine whether there is a material change, courts look to whether the original mark and the newly altered mark create an essentially the same impression. In re Hacot-Columbier, 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 (TTAB 1983)); see In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); TMEP §807.14. Practically speaking- if your mark was already published in the Official Trademark Gazette and it needs to be published again after you submit a voluntary amendment, the change is most likely material. In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ at 743-44). This last point though, has some exceptions- I've had cases where I received a notice of allowance after a mark was published and I subsequently amended the mark which was then published and registered.
Let's look at some examples:
The above amendment was not accepted because adding the letter "T" changes the meaning or the connotation. See In re Who? Vision Sys., Inc., 57 USPQ2d 1211.
Both words start with the letter "W," end with the letters "TH," and comprise five letters but they are two different words with two different meanings and connotations. This amendment was not accepted.
The logo on the left is the original and the right is the amended mark. Notice that all of the same elements are present in both marks. The only differences are the black background and the double outline of the shield and the banner. The two marks create the same impression and would not require an examining attorney to search for additional elements.
So what do you do when your amendment is not accepted? You can submit a new application and file an express abandonment for the current application. This would probably be the best option if there is not another application for a similar mark pending (e.g., filed after your original application but before your new application) that would bar your new application from being registered. Otherwise, you could try to argue that the amendment is not material, but this can be a pretty difficult case to make. Has anyone made a successful case?