Deciphering the USPTO's Material Alteration Standard for Amending Marks

The decision regarding whether to seek to amend the form of a mark goes well beyond just aesthetics, as there are two important legal considerations, particularly as to existing registrations. They are whether the amended mark will be deemed as abandoning the original form of the mark and whether the changes made will prevent the brand owner from tracing priority back to the original mark's date of first use and, in the case of a federally registered mark, its nationwide priority date. The latter consideration is also known as "tacking" and in contentious matters a decision on whether tacking is available will often control priority of rights between the brand owner and a challenger. See, Hana Fin., Inc. v. Hana Bank, 574 U.S. 418 (2015). When properly executed, some brand owners have many times successfully amended the same registration over the years with priority in the originally registered mark dating back a century or more.

Although clearly desirable, amendments to marks subject to federal registrations or registration applications are not automatically accepted by the United States Patent and Trademark Office. 15 U.S.C. §1057(e) provides "upon application of the owner …, the Director for good cause may permit any registration to be amended … Provided, That the amendment … does not alter materially the character of the mark." Trademark Rule 2.72 and the Trademark Manual of Examining Procedure (TMEP) have expanded on what constitutes a material alteration. See, 37 C.F.R. §2.72; TMEP §§807.14-807.14(f), 1205.8, 1609.02-1609.02(a) (October 2018). These sections, as well as case law construing them, provide the following general guidelines to brand owners seeking to amend their federal registrations or applications:

• The material alteration standard is applied equally for evaluating amendments to marks both during the original prosecution of an application and after a registration has issued.
• An amendment to an application will be deemed to be material alteration if the change would require republication "in order to present the mark fairly for purposes of opposition." TMEP 1602(a).
• An amendment to a mark will not be deemed to be a material alteration if "the modified mark contains the essence of the original mark" and "the mark as amended creates essentially the same impression as the original mark".
• The Office takes a flexible, not a rigid, approach to application of the material alteration standard. Each case is to be considered in light of the specific circumstances.
• Whether a proposed amendment materially alters the mark is determined by comparing the proposed amendment with the description or drawing of the mark as filed with the original application.

37 C.F.R. §2.72; TMEP §§807.14, 1609.02(a); see also, In re Who? Vision Sys., Inc., 57 U.S.P.Q.2d 1211, 1217-18 (T.T.A.B. 2000); In re Finlay Fine Jewelry Corp., 41 U.S.P.Q.2d 1152, 1154 (T.T.A.B. 1996).