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"Drawings Practice" in the Prosecution of Trademark Applications

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"Drawings Practice" in the Prosecution of Trademark Applications

by Jonathan Hudis and Kathleen Cooney-Porter¹

© J. Hudis and K. Cooney-Porter 1998

During the prosecution of trademark applications before the United States Patent and Trademark Office ("USPTO"), attorneys, every so often, are surprised by mid-prosecution changes to their client’s mark after a trademark application has been filed. This article discusses the extent to which changes can be made to the presentation of the mark after the filing of an original trademark application.

At the very least, in order to receive a filing date for a trademark application² from the USPTO it must contain the date of the Applicant’s first use of the mark (if use based), the date of the Applicant’s first use of the mark in commerce, the goods/services on or in connection with which the mark is used, the mode or manner in which the mark is used in connection with such goods/services, a statement that the person verifying the accuracy of the application believes that it is the owner of the mark, a drawing of the mark in question, and, if use-based, three specimens of use. Trademark Rule 2.21(a), 37 C. F. R. § 2.21(a). Since 1989, an Applicant may file for trademark protection based upon an intent to use the mark in commerce. 15 U.S.C. § 1051(b). In such case, dates of first use and first use in commerce need not be supplied, at least initially.³

Alternatively, under Section 44(d) of the Lanham Act, 15 U.S.C. § 1126(d), an Applicant may base its right to registration upon its home country application for a substantially similar mark for substantially similar goods/services. In such a case, the Applicant will receive a filing date based upon the earlier filing date of its home-country application. Additionally, a foreign Applicant may seek registration in the United States based upon its home country registration under 44(e) of the Lanham Act, 15 U.S.C. § 1126(e). Again, the mark in the application must be substantially identical to the mark presented in the home country registration for substantially identical goods/services. Trademark Act § 44(e), 15 U.S.C. § 1126(e), TMEP § 1009.(04).⁴

Discussion here will concentrate on the drawing page aspect of the application, with respect to use-based applications, Lanham Act, Section 1(a), intent-to-use based applications, Lanham Act Section 1(b); U.S. applications based upon a foreign home country application, Lanham Act Section 44(d); and U.S. applications based upon a foreign home country registration, Lanham Act Section 44(e).

Generally, the USPTO requires that the mark presented on the drawing page agree with the mark on the specimens of use or on the foreign application/registration upon which the U.S. application is based. Trademark Act §§ 1 and 44, 15 U.S.C. §§ 1051 and 1126, TMEP § 807.14. If an Applicant requests an amendment of the mark to overcome an objection that the mark on the drawing page does not agree with the mark as used on the specimens or as presented in a foreign application/registration, the USPTO will accept or reject the amendment depending upon whether it views that the mark has been "materially altered." In this regard, Trademark Rule 2.72(a), 37 C.F.R. § 2.72(a), provides:

Amendments may not be made to the description or drawing of the mark if the character of the mark is materially altered. The determination of whether a proposed amendment materially alters the character of the mark will be made by comparing the proposed amendment with the description or drawing of the mark as originally filed. (Emphasis Added).

As interpreted by the Trademark Trial and Appeal Board of the United States Patent and Trademark Office:

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.

Visa Int'l Svc. Assn. v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983).

The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board recently have issued several decisions which provide the circumstances under which an amendment to a mark will be considered a "material alteration" and thus rejected, or whether such an amendment would be acceptable.

In In re Eccs, Inc. 94 F.3d 1578 (Fed. Cir.1996), the Applicant filed a use-based application for the mark, EXA MODULE, with the term "EXA" presented immediately above the term "MODULE". However, the specimens of use submitted with the application presented the mark as one continuous word, "EXAMODULE". A final refusal of registration was appealed to the Trademark Trial and Appeal Board, and ultimately to the Federal Circuit Court of Appeals. The Federal Circuit reversed both the Examining Attorney and the Board’s decision, which would not permit the Applicant's proffered amendment to the mark. In its decision, the Federal Circuit distinguished between two categories of drawing amendments. The "first category" of amendments are those which seek "to conform the drawing to the mark sought to be registered as shown by the specimens ‘showing the mark as actually used’ and therefore owned by the Applicant so he can register it." In such cases the amendment should be permitted. In the "second category" of amendments, the Applicant "attempt[s] to change the mark described in the application as originally filed where there has been no ambiguity as to what it is or inconsistency between the specimens and drawing as originally filed." In this latter case, an amendment would not be permitted. In re Eccs, 94 F.3d at 1582. Ultimately, the applicant in In re Eccs was permitted to amend the drawing of its mark to conform with its specimens of use.

In In re Finley Jewelry Corp., 41 USPQ2d 1152 (TTAB 1996), the Applicant filed an intent-to-use based application to register the mark, NY JEWELRY OUTLET. The specimens of use later submitted with Applicant's amendment to allege use of the mark showed the mark as NEW YORK JEWELRY OUTLET. The Board found that the Applicant’s proposed amendment to conform the drawing page to the specimens presenting the mark as NEW YORK JEWELRY OUTLET was not a material alteration of the mark. 41 USPQ2d at 1154.

In In re Hacot-Colombier, 41 USPQ2d 1523 (Fed. Cir. 1997), the Applicant’s original mark was presented as LA MAISON NATURE & TREE DESIGN. The United States application was based upon the Applicant's home country (French) application, filed six months earlier. However, the French application presented the mark as LA MAISON NATURE PAR HACOT-COLOMBIER, H&C & TREE DESIGN. Eighteen months later, the Applicant attempted to amend the drawing of its mark to conform to the French application, to include its "housemark" PAR HACOT-COLOMBIER, H&C. The Federal Circuit upheld the rejection of the proposed addition of the housemark as a material alteration for two reasons.

First, the Applicant’s French application included several more classes of goods than set forth in its United States application. Second, at the time of its original United States application, the Applicant had not yet acquired a registration on its housemark. The proposed addition of the housemark would materially affect the Applicant’s right to registration and require a new search by the Examining Trademark Attorney. 41 USPQ2d at 1527.

In In re Decra e.V., 44 USPQ2d 1693 (TTAB 1997) the Applicant filed its application for the mark DECRA & DEVICE based upon its home country (German) registration under Section 44(e) of the Lanham Act. However, the drawing page submitted with the original application omitted the word DECRA under the stylized letter "D", as shown in the Applicant’s German registration. The Board reversed the Examining Attorney’s final refusal to allow the Applicant to amend the drawing page of its mark to conform to the mark presented in the German registration, following the reasoning in In re Eccs, supra. Essentially, all Applicant requested was to conform its drawing page to the trademark relied upon in its German registration. The Board found this to be permissible.

The USPTO will permit certain amendments to conform the application drawing page to an Applicant's specimen of use or home country registration. Such amendments should be submitted to the USPTO as soon as the change in circumstances becomes clear. However, it is not recommended that the prosecuting attorney completely rely on the decisions cited above, for the circumstances of an Applicant’s particular case could be different. Rather, these decisions should be used as a "safe harbor" when the prosecuting attorney believes that the Examining Trademark Attorney has taken an unreasonable position during prosecution of the application.

This article was recently published in New Matter (a publication of the California IP Bar), Spring 1998, Volume 23, Number 1, pages 9-10.

1.  Jonathan Hudis is a member of, and Kathleen Cooney-Porter is an associate in, the intellectual property firm of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. in Arlington, Virginia.  They practice in the firm's Trademark and Copyright Practice group.

2.  The Lanham Act, codified at 15 U.S.C.§§ 1051 et seq. provides for the registration of trademarks, service marks and collective membership marks. Lanham Act Sections 1, 2, 3 and 45, 15 U.S.C. §§ 1051, 1052, 1053 and 1127.  In this article, we will use the term "trademark" for ease of reference.

3.  Ultimately, to obtain registration, an intent-to-use application must either be amended to allege use, or a statement of use must be filed within 36 months after a Notice of Allowance has been issued. 37 C.F.R. § 2.89; TMEP Section 1105.05(d).

4.  "TMEP" refers to the trademark manual of examining procedures, April 1997 edition.