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Material Alteration

Amendments may not be made to the drawing of the mark if the character of the mark is materially altered. Trademark Rule 2.72, 37 C.F.R §2.72. The test for determining whether an amendment is a material alteration was articulated in Visa International Service Association v. Life-Code Systems, Inc., 220 USPQ 740 (TTAB 1983):

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.

Id. at 743-44.
Each case must be decided on its own facts. The controlling question is always whether the new and old form of the marks create essentially the same commercial impression. TMEP §807.14(a).

Example : Amending the mark PETER, used on kitchen pots and pans, from PETER to PETER PAN would materially change the mark because adding the generic word PAN dramatically changes the meaning of the mark – from a person’s name, to a well known storybook character’s name.

Adding or deleting TLDs in domain name marks
Generally, for domain name marks (e.g., COPPER.COM), the applicant may add or delete a TLD to the drawing of the mark without materially altering the mark. A mark that includes a TLD will be perceived by the public as a domain name, while a mark without a TLD will not. However, the public recognizes that a TLD is a universally-used part of an Internet address. As a result, the essence of a domain name mark is created by the second level domain name, not the TLD. The commercial impression created by the second level domain name usually will remain the same whether the TLD is present or not.

Example: Amending a mark from PETER to PETER . COM would not materially change the mark because the essence of both marks is still PETER, a person’s name.

Similarly, substituting one TLD for another in a domain name mark, or adding or deleting a “dot” or “http://www.” or “www.” to a domain name mark is generally permitted.

Example : Amending a mark from XYZ . ORG to XYZ . COM would not materially change the mark because the essence of both marks is still XYZ.

Adding or deleting TLDs in other marks
If a TLD is not used as part of a domain name, adding or deleting a TLD may be a material alteration. When used without a second level domain name, a TLD may have trademark significance. See TMEP §807.14(a).

Example : Deleting the term . COM from the mark . COM ? used on sports magazines would materially change the mark.

Last Modified: March 22nd, 2010