Opinion · Trademark Trial And Appeal Board
Lee Greenwood
Lee Greenwood, No. 87168719, UP11285296 (T.T.A.B. Dec. 1, 2020)
- Type
- Opinion
- Court
- Trademark Trial And Appeal Board
- Jurisdiction
- Federal
- Date
- 2020-12-01
- Topic
- international-arbitration
This Opinion is a Precedent of the TTAB Mailed: December 1, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Lee Greenwood _____ Serial No. 87168719 _____ Paul W. Kruse of Bone McAllester Norton PLLC for Lee Greenwood Barbara A. Gaynor, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Greenbaum, Heasley, and Johnson, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Applicant, Lee Greenwood, seeks registration on the Principal Register of the proposed mark GOD BLESS THE USA (in standard characters) for “accent pillows; decorative centerpieces of wood,” in International Class 20 and “decorative wall hangings, not of textile” in International Class 27.1 1 Application Serial No. 87168719 was filed on September 12, 2016, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as July 13, 2016 as to both classes of goods. Page references to the application record are to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system.
Citator
UpLaw has not yet analyzed Lee Greenwood. The absence of a flag is not a finding that it is good law.
This Opinion is a
Precedent of the TTAB
Mailed: December 1, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Lee Greenwood
_____
Serial No. 87168719
_____
Paul W. Kruse of Bone McAllester Norton PLLC
for Lee Greenwood
Barbara A. Gaynor, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____
Before Greenbaum, Heasley, and Johnson,
Administrative Trademark Judges.
Opinion by Heasley, Administrative Trademark Judge:
Applicant, Lee Greenwood, seeks registration on the Principal Register of the
proposed mark GOD BLESS THE USA (in standard characters) for “accent pillows;
decorative centerpieces of wood,” in International Class 20 and “decorative wall
hangings, not of textile” in International Class 27.1
1 Application Serial No. 87168719 was filed on September 12, 2016, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051
(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as July 13, 2016 as to both classes of goods.
Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.
Serial No. 87168719
The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051
,
1052 and 1127, on the ground that it fails to function as a trademark. When the
refusal was made final, Applicant appealed and filed a brief seeking reversal of the
refusal to register.2
The day after the Examining Attorney filed her brief,3 Applicant belatedly filed a
request to remand the application in order to amend the proposed mark to THE LEE
GREENWOOD COLLECTION GOD BLESS THE USA.4 “As a best practice, an
applicant seeking to obviate a refusal by proposing an amendment to an application
should propose the amendment as early as possible during prosecution.” In re Ox
Paperboard, LLC, 2020 USPQ2d 10878
, *1 (TTAB 2020). Nevertheless, the Board
suspended the appeal and remanded the application to the Examining Attorney for
consideration of the proposed amendment.5 See TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (TBMP) § 1205.01 (2020) (“A request for remand to consider
an amendment will be granted upon a showing of good cause. … If the request for
remand is granted, the Board will suspend proceedings with respect to the appeal
and remand the application to the examining attorney for consideration of the
amendment.”).
On remand, the Examining Attorney refused to accept the proposed amendment
2 8 TTABVUE.
3 10 TTABVUE.
4 11 TTABVUE.
5 12 TTABVUE.
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Serial No. 87168719
on the ground that it would materially alter the applied-for mark.6 Applicant
protested that he was merely adding his previously registered mark, THE LEE
GREENWOOD COLLECTION7 for the same goods, to his proposed mark, GOD
BLESS THE USA, thereby enabling it to function as a trademark.8 The Examining
Attorney nonetheless maintained and made final her determination that the
proposed amendment would materially alter the original applied-for mark. She
accordingly refused the proposed amendment, and advised Applicant that the
previous drawing, GOD BLESS THE USA, would remain the operative drawing for
the applied-for mark.9 See TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 807.17 (Oct. 2018) (“If an applicant submits an amendment to the drawing and the
examining attorney determines that the amendment is unacceptable, the examining
attorney must issue an Office action refusing to accept the amendment and advising
the applicant that the amendment will not be entered, and that the previous drawing
remains the operative drawing.”).
The appeal proceeded, posing two issues: (I) whether the original proposed mark,
GOD BLESS THE USA, fails to function as a trademark and if so, (II) whether the
proposed amendment, THE LEE GREENWOOD COLLECTION GOD BLESS
THE USA, was a material alteration of the original applied-for mark. We answer
both questions in the affirmative, and affirm the refusal to register.
6 Nov. 13, 2018 Office Action.
7 Reg. No. 5208310, issued May 23, 2017 (“COLLECTION” disclaimed).
8 May 13, 2019 Response to Office Action.
9 June 7, 2019 Office Action, 13 TTABVUE.
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Serial No. 87168719
I. Whether the Original Applied-For Mark Fails to Function as a
Trademark
We first address whether the applied-for mark functions as a trademark, because,
if it does, we need not reach the amendment issue. A proposed trademark is
registrable only if it functions as an identifier of the source of the applicant’s goods or
services. In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039
, *16 (TTAB 2019). To
function as a trademark, an applicant’s proposed mark must, by definition, “identify
and distinguish his or her goods, … from those manufactured or sold by others and
… indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127
,
quoted in In re Texas With Love, LLC, 2020 USPQ2d 11290
, *2 (TTAB 2020). See also
In re Bose Corp., 546 F.2d 893
,192 USPQ 213
, 215 (CCPA 1976) (“[T]he classic
function of a trademark is to point out distinctively the origin of the goods to which it
is attached”). “Matter that does not operate to indicate the source or origin of the
identified goods or services and distinguish them from those of others does not meet
the statutory definition of a trademark and may not be registered, regardless of the
register on which registration is sought.” In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048
, *2-3 (TTAB 2020).
The critical inquiry in determining whether a proposed mark functions as a
trademark is how it would be perceived by the relevant public. In re Vox Populi
Registry Ltd., 2020 USPQ2d 11289
, *4 (TTAB 2020); In re TracFone Wireless, Inc.,
2019 USPQ2d 222983
, *1 (TTAB 2019) (“The key question is whether the asserted
mark would be perceived as a source indicator for Applicant’s [goods or] services.”);
D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710
, 1713 (TTAB 2016). To function
as a trademark, the proposed mark must be used in a manner calculated to project to
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Serial No. 87168719
purchasers or potential purchasers a single source or origin for the goods. In re
DePorter, 129 USPQ2d 1298
, 1299 (TTAB 2019). “Thus, a threshold issue in some
cases (like this one) is whether the phrase in question in fact functions to identify the
source of the services recited in the application and distinguish them from the
services of others or, instead, would be perceived merely as communicating the
ordinary meaning of the words to consumers.” In re Wal-Mart Stores, Inc., 129 USPQ2d 1148
, 1149 (TTAB 2019). “Where the evidence suggests that the ordinary
consumer would take the words at their ordinary meaning rather than read into them
some special meaning distinguishing the goods from similar goods of others, then the
words fail to function as a mark.” In re Ocean Tech., Inc., 2019 USPQ2d 450686
, *3
(TTAB 2019) (internal punctuation omitted).
Consumers ordinarily take widely-used, commonplace messages at their ordinary
meaning, and not as source indicators, absent evidence to the contrary. See In re
Mayweather Promotions, LLC, 2020 USPQ2d 11298
, *1 (TTAB 2020) (“Widely used
commonplace messages are those that merely convey ordinary, familiar concepts or
sentiments and will be understood as conveying the ordinary concept or sentiment
normally associated with them, rather than serving any source-indicating function.”).
“Messages that are used by a variety of sources to convey social, political, religious,
or similar sentiments or ideas are likely to be perceived as an expression of support
for, or affiliation or affinity with, the ideas embodied in the message rather than as a
mark that indicates a single source of the goods or services.” In re DePorter, 129
USPQ2d at 1302 n.14 (quoting TMEP § 1202.04(b)). “The more commonly a phrase is
used, the less likely that the public will use it to identify only one source and the less
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Serial No. 87168719
likely that it will be recognized by purchasers as a trademark.” In re Eagle Crest Inc.,
96 USPQ2d 1227
, 1229 (TTAB 2010) quoted in In re Peace Love World Live, LLC,127 USPQ2d 1400
, 1402 (TTAB 2018).
To determine how consumers are likely to perceive the phrase sought to be
registered, we look not only to the specimens, but to other evidence of record showing
the phrase as used in general parlance. In re Wal-Mart, 129 USPQ2d at 1150. The
Examining Attorney maintains that Applicant’s applied-for mark, GOD BLESS
THE USA, is a common patriotic message, analogous to and synonymous with “God
Bless America.”10 See TMEP § 1202.04(b) (“Derivatives or variations of widely used
messages also fail to function as marks if they convey the same or similar type of
information or sentiment as the original wording.”). The wording is, in fact, commonly
used by many different sources on a vast array of goods, she notes, as illustrated by
evidence obtained from over three dozen third-party websites.11 The following are
representative samples from various sources:
12 13
10 10 TTABVUE 4.
11 10 TTABVUE 4-9.
12 CafePress.com, March 17, 2017 Office Action TSDR at 5.
13 CafePress.com, Id. at 11.
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Serial No. 87168719
14 15
16 17
18 19
14 Zazzle.com, Id. at 14.
15 Shop.ColonialWilliamsburg.com, Id. at 22.
16 SupportStore.com, Id. at 24.
17 CelebratingHomeDirect.com, Id. at 29.
18 ChristmasLoft.com, Id. at 36.
19 HobbyLobby.com, Id. at 38.
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Serial No. 87168719
20 21
22 23
Thus, the record evidence demonstrates that a variety of sources prominently
display the phrase GOD BLESS THE USA on a range of household items such as
mugs, trays, cutting boards, pillows, ornaments, posters, flags, and the like. This
common use by third parties renders it less likely that the public would perceive the
phrase as identifying a single commercial source. In re Wal-Mart, 129 USPQ2d at
1156. In that sense, this case is reminiscent of D.C. One Wholesaler v. Chien, where
the phrase “I ♥ DC” was commonly available on a range of goods, from apparel and
aprons to commuter cups and keychains. 120 USPQ2d at 1713-14. There, the Board
20 Etsy.com Aug. 11, 2017 Office Action TSDR at 30.
21 Etsy.com, Id. at 34.
22 Houzz.com, Id. at 42.
23 DiscountDecorativeFlags.com, Id. at 50.
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Serial No. 87168719
found that the “widespread ornamental use of the phrase by third parties ‘is part of
the environment in which the [proposed mark] is perceived by the public and . . . may
influence how the [proposed mark] is perceived.’” Id. at 1716 (quoting In re Hulting,
107 USPQ2d 1175
, 1178 (TTAB 2013); In re Tilcon Warren Inc.,221 USPQ 86
, 88
(TTAB 1984)). Here, as there, the record indicates that the phrase GOD BLESS THE
USA is displayed, not as a source indicator, but as an expression of patriotism,
affection, or affiliation with the United States of America. Id.
Applicant, a country music artist, insists that “God Bless the USA” would be
commonly recognized as his signature song. He quotes Wikipedia:
“God Bless the USA” is an American patriotic song written and recorded
by country music artist Lee Greenwood, and is considered to be his
signature song. The first album it appears on is 1984’s You’ve Got a Good
Love Comin’. It reached No. 7 on the Billboard magazine Hot Country
Singles chart when originally released in the spring of 1984, and was
played at the 1984 Republican National Convention with President Ronald
Reagan and first lady Nancy Reagan in attendance, but the song gained
greater prominence during the Gulf War in 1990 and 1991, as a way of
boosting morale. The popularity of the song rose sharply after the
September 11 attacks and during the 2003 invasion of Iraq, and the song
was re-released as a single, re-entering the country music charts at No. 16
and peaking at No. 16 on the Billboard Hot 100 pop chart in 2001.24
“The song ‘God Bless the USA’ has been downloaded at least two and half million
times since reentering the Billboard Country Digital Song Sales Chart,” Applicant
points out.25 He maintains that if one searches for “God Bless the USA” on the Google
search engine, the first page of results refers to Applicant’s song title.26 In view of
“Mr. Greenwood’s talent and fame” and “the notoriety of his iconic song ‘God Bless
24 En.wikipedia.org, 8 TTABVUE 3, 14.
25 8 TTABVUE 3, 16.
26 8 TTABVUE 3, 9-12.
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Serial No. 87168719
the USA’ and his close association therewith…,” Applicant contends that the public
will regard the proposed mark GOD BLESS THE USA as his trademark.27
However, “[i]t is well settled that not every designation that is placed or used on
a product necessarily functions as a trademark for said product and not every
designation adopted with the intention that it perform a trademark function
necessarily accomplishes that purpose.” D.C. One Wholesaler v. Chien, 120 USPQ2d
at 1713; accord In re Texas With Love, 2020 USPQ2d 11290
at *2-3. Because there
are no limitations to the channels of trade or classes of consumers of the goods
identified in the application, the relevant consumers are members of the general
public, who may or may not be music aficionados. CBS Inc. v. Morrow, 708 F.2d 1579
,
218 USPQ 198, 199
(Fed. Cir. 1983); Bell’s Brewery, Inc. v. Innovation Brewing,125 USPQ2d 1340
, 1345 (TTAB 2017), cited in In re Mayweather Promotions,2020 USPQ2d 11298
at *3. In any event, even if these consumers were familiar with the
song and Applicant himself, they may not associate the household items identified in
the involved application with Applicant or his song, when so many third parties offer
household items bearing the same wording.
In sum, based on the record evidence, we find that Applicant’s proposed mark
GOD BLESS THE USA is “devoid of source-identifying significance and therefore
fails to function as a trademark.” In re Hulting, 107 USPQ2d at 1181.
27 8 TTABVUE 4-5.
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Serial No. 87168719
II. Whether Applicant’s Proposed Amendment Would Materially
Alter the Original Applied-For Mark
As a fallback position, Applicant seeks to amend his application to include his
registered mark THE LEE GREENWOOD COLLECTION.28 Applicant points out
that this registered mark appears close to his applied-for mark GOD BLESS THE
USA on the specimens he provided:29
30
The prior registration identifies the same goods identified in the present
application: “accent pillows, decorative centerpieces of wood” in Class 20 and
“decorative wall hangings, not of textile” in Class 27. Applicant accordingly proposes
to amend his applied-for mark to add his prior registered mark. The resultant
28 Reg. No. 5208310.
29 8 TTABVUE 3-4.
30 Specimens submitted with application, Sept. 12, 2016.
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Serial No. 87168719
proposed amended mark would be THE LEE GREENWOOD COLLECTION GOD
BLESS THE USA in standard characters.
The Examining Attorney refused to accept this proposed amendment on the
ground that it was a material alteration of the original applied-for mark.31 Resolution
of this issue hinges on Trademark Rule 2.72, which provides:
(a) In an application based on use in commerce under section 1(a) of the
Act, the applicant may amend the description or drawing of the mark only
if:
…
(2) The proposed amendment does not materially alter the mark.
The Office will determine whether a proposed amendment
materially alters a mark by comparing the proposed amendment
with the description or drawing of the mark filed with the original
application.
37 C.F.R. § 2.72
(a)(2) (emphasis added).
Thus, the issue is whether Applicant’s proposed amendment, THE LEE
GREENWOOD COLLECTION GOD BLESS THE USA, would materially alter
his original applied-for mark. We determine this issue based on Applicant’s request
to remand, the Examining Attorney’s pertinent Office Actions, and Applicant’s
response thereto.32 See TMEP § 715.04(b) (“When proceedings with respect to the
31 Nov. 13, 2018 Office Action. The Examining Attorney also found fault with the specimens:
“The applicant is advised that even if the proposed amendment to the mark is allowed, the
mark on the specimen originally submitted with the application is different than the mark
shown in the proposed amended drawing. The mark on the originally submitted specimen is
THE LEE GREENWOOD GOD BLESS THE USA HOME COLLECTION; the mark in the
proposed amended drawing is THE LEE GREENWOOD COLLECTION GOD BLESS THE
USA.” Nov. 13, 2018 Office Action TSDR at 1 n.2, 13 TTABVUE 3. In view of our affirmances
of the Examining Attorney’s refusals, we do not reach this issue.
32 11-14 TTABVUE, Nov. 13, 2018 Office Action, May 13, 2019 Response to Office Action,
June 7, 2019 Office Action.
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Serial No. 87168719
appeal are resumed, the Board will take further appropriate action with regard to
any additional ground of refusal.”).
A. Applicant’s and the Examining Attorney’s Arguments
Applicant posits that his proposed amendment simply adds his previously
registered mark, THE LEE GREENWOOD COLLECTION,33 to his applied-for
mark, GOD BLESS THE USA. Both marks are in standard characters, and both are
for the same identified goods. Applicant maintains that the TMEP clearly allows him
to amend the proposed mark to include his previously registered mark, as it states
“An amendment adding an element that the applicant has previously registered for
the same goods or services may be permitted.” TMEP § 807.14(b).34
This TMEP section cites Florasynth Labs., Inc. v. Mülhens, 122 USPQ 284
, 284
(Comm’r 1959). In that case, Mülhens’ application to register ELAN for perfumes and
cosmetics was opposed by registrant Florasynth Labs, which owned ELAN TIBET
for perfume oil used in making perfumes and colognes. To settle their dispute, the
parties agreed that applicant Mülhens would amend his application to add his
registered trademark 4711 above ELAN. Id.
The examiner refused to enter the
amendment on the ground that it made a material change in the mark—a change
prohibited by Trademark Rule 2.72, which then provided that “[a]mendments may
not be made if the nature of the mark is changed thereby.”
Applicant Mülhens petitioned the Commissioner, who ruled that:
The addition of applicant’s well-known registered mark to the mark sought
to be registered, thus resulting in the composite mark being used by
33 Reg. No. 5208310.
34 Applicant’s May 13, 2019 Response to Office Action at TSDR 4.
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Serial No. 87168719
applicant, is not a material change which would require republication of
the mark. The amendment should therefore be entered, and the examiner
will take such action.
Id.
In the present case, Applicant Greenwood argues, consistently with Florasynth,
that “[r]epublication of the amended mark is not required since Applicant’s THE LEE
GREENWOOD COLLECTION mark has been registered for the exact same goods
set forth in this application.”35
The Examining Attorney counters that “[a]dding previously registered matter to
a mark is not an absolute right: ‘An amendment adding an element that the applicant
has previously registered for the same goods or services may be permitted.’ TMEP
§807.14(b) [emphasis added].”36 In support of this position, she cites In re John
LaBatt Ltd., 26 USPQ2d 1077
(Comm’r 1992) a decision issued three decades after
Florasynth. LaBatt sought to amend its registered mark, shown on the left below, to
incorporate elements from another registration, shown on the right:
The resultant proposed amended mark (which LaBatt was using in commerce) was:
35 Id.
36 Nov. 13, 2018 Office Action at 2.
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Serial No. 87168719
Id. at 1977-78
.
The examiner refused LaBatt’s proposed amendment on the ground that it sought
to add new words and design elements that were never searched or published for
opposition. Id. at 1078
. LaBatt responded that the new elements already had been
searched and published in conjunction with its previous Registration No. 1423165
.
Id.
On consideration of LaBatt’s petition, the Commissioner acknowledged
Florasynth, but noted “[w]hether republication would be required is only one
consideration in the determination of whether a mark has been materially changed.”
Id.
The decision declared that LaBatt “does not seek to merely add an element from
one registration to another. Rather, the applicant seeks to eliminate its original
mark, and substitute another. The exception to the material alteration rule clearly
does not encompass cases where the original mark disappears.” Id.
Applicant argues that, unlike LaBatt, he merely proposes to add THE LEE
GREENWOOD COLLECTION to the original applied-for mark GOD BLESS THE
USA, so the original applied-for mark does not disappear.37
37 May 13, 2019 Response to Office Action at 4-5.
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Serial No. 87168719
LaBatt, however, was more nuanced than Applicant suggests. Beginning with the
registered mark (in the upper left), the Commissioner observed:
The mark as registered features a dark oval against a square label, with
the letters JL filling most of the oval, and the words EXTRA STOCK
superimposed, in smaller letters, over the JL. Across the top of the oval, in
letters less than half the size of the EXTRA STOCK, are the words JOHN
LABATT’S. Appearing on the bottom of the oval is a circular emblem
showing a cabin.
The proposed amendment to the mark eliminates the dark oval, the square
label, the large letters JL, the word JOHN, and the circular emblem
featuring a cabin. The addition of Registration 1,423,165 not only
introduces new design elements, but changes the presentation of the words
EXTRA STOCK, and alters the formerly unobtrusive display of the
surname to make LABATT’S the most striking portion of the mark.
Id. at 1079
.
The LaBatt decision concluded that “the test for whether a mark has been
materially altered does not depend on whether the dominant portion of the original
mark is still present in the amended form. The question is whether the proposed mark
has a different commercial impression.” Id. at 1078
.
But there were other decisions interpreting what constitutes a material alteration
of a mark between the decisions in Florasynth and LaBatt, and changes to Rule 2.72
as well. So simply choosing between Florasynth and Labatt does not fully answer the
issue presented. Based on the evolution of the applicable Trademark Rules and case
law concerning amendments to marks, discussed below, we hold that an applicant’s
proposed amendment adding previously registered matter for the same goods or
services may, but not must, be permitted, depending on whether it materially alters
the originally-applied for mark. TMEP § 807.14(b).
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Serial No. 87168719
B. Evolution of the Law Regarding Material Alteration
In 1983, the Board considered Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740
(TTAB 1983), in which Visa proposed amending its applied-for word and
design mark from to , because Visa believed that the image of
an airplane pointing downward was too negative. Id. at 743
. The Board found the
amendment acceptable:
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.
…
It is the opinion of the Board that the amendment to the drawing is not a
material alteration of the mark. The Examining Attorney incorrectly
refused to enter the amendment to the drawing when applicant sought to
amend it. The two marks create the same commercial impression.
Id. at 743-44
.
That same year, Trademark Rule 2.72 was amended so that the standard for
amending an applied-for mark was the same as for amending a registered mark:
“Amendments may not be made if the character of the mark is materially altered.”38
Later decisions applied that standard when an applicant sought to add material
to a mark in an original application. For instance, in In re Pierce Foods Corp., 230 USPQ 307
(TTAB 1986), the applicant sought to add its unregistered house mark
PIERCE to its applied-for stylized mark CHIK’N-BAKE:
38 37 C.F.R. § 2.72
,48 Fed. Reg. 23122
-01, May 23, 1983.
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Serial No. 87168719
The Board affirmed the examining attorney’s refusal to accept the amendment,
quoting TMEP Section 807.14(a): “An amendment may not be made if the mark is
materially altered by the amendment. 37 CFR Sec. 2.72. This possibility more
frequently arises when matter is added to the mark than when matter is deleted from
the mark. It is for the Examining Attorney to decide whether the mark is materially
altered by the amendment.” Id.
at 308 n.2. “[W]e do agree that the addition of the
house mark, which is not itself the subject of a separate registration for these goods,
presents a materially different mark.” Id. at 308
(contrasting the case with
Florasynth and following Visa).
Similarly, in In re Nationwide Industries Inc., 6 USPQ2d 1882
(TTAB 1988),
where the applicant proposed to add its house mark SNAP to RUST BUSTER,
forming the amended mark SNAP RUST BUSTER, the Board applied the teachings
in Visa, Pierce, and Florasynth. As in Visa, it noted, “the new and old forms of the
mark must create essentially the same commercial impression.” Id. at 1885
. In Pierce,
it noted, the addition of a house mark “would normally constitute a material
alteration of the character of the mark.” Id.
But the Board noted that Florasynth
appeared to provide an exception:
However, an amendment adding matter to an applicant’s mark sought to
be registered has been permitted where the applicant owned a registration
of the matter sought to be added for the same goods as those listed in the
application, notwithstanding the fact that the amendment constituted
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Serial No. 87168719
what normally would be considered a material alteration of the mark in
the application.
Id.
(citing Florasynth,122 USPQ 284
).
Its reference to Florasynth, however, was dicta, as the Board’s decision in
Nationwide was dictated by its finding that “the goods in this registration are
distinctly different from those for which registration is now sought, and applicant
does not, in fact, contend otherwise.” Id. at 1886
, cited in In re Hacot-Columbier,105 F.3d 616
,41 USPQ2d 1523, 1526-27
(Fed. Cir. 1997) (finding applicant’s proposed
addition of house mark would be a material alteration of applied-for mark because it
was not yet registered and identified different goods). On that basis, the Board
affirmed the refusal to register SNAP RUST BUSTER.
Nationwide’s dicta in 1988 characterized Florasynth as creating an exception to
the general rule against material alteration of an applied-for mark: that is, that an
applicant could add a registered mark to an applied-for mark for the same goods or
services, even if that addition would otherwise be considered a material alteration of
the original.
But later evolution in the law bears out the approach in the 1992 LaBatt decision:
that is, an applicant’s ownership of a registered mark for the same goods or services
may be considered as a factor in determining whether adding that mark to an
applied-for mark constitutes a material alteration. Specifically, between Nationwide
and LaBatt, Trademark Rule 2.72 was amended in 1989 to provide, in pertinent part:
(a) 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
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Serial No. 87168719
mark will be made by comparing the proposed amendment with the
description or drawing of the mark as originally filed.39
This provision was added “to codify present practice, the purpose of which is to
prevent an applicant from repeatedly amending the mark sought to be registered
until it bears little resemblance to the mark as originally filed.”40 The “material
alteration” rule is the standard for evaluating proposed amendments to all marks at
all relevant stages of processing, during examination of the application and after
registration. In re Umax Data System Inc., 40 USPQ2d 1539
, 1540 (Comm’r, 1996).
See generally 3 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION §§ 19:133, 19:58.50 (5th ed. Sept. 2020 update). Thus, “an amendment
to the mark, whether offered before or after registration, will be allowed only if the
amendment does not alter materially the character of the mark.” Hilson Research
Inc. v. Society for Human Resource Mgmt., 27 USPQ2d 1423
, 1439 n.24 (TTAB 1993).
In 1999, Trademark Rule 2.72 was amended again, ten years after the previous
amendment, to state this requirement in the affirmative:
(a) In an application based on use in commerce under section 1(a) of the Act,
the applicant may amend the description or drawing of the mark only if:
(1) The specimens originally filed, or substitute specimens filed under
§ 2.59(a), support the proposed amendment; and
(2) The proposed amendment does not materially alter the mark. The Office
will determine whether a proposed amendment materially alters a mark by
39 Amendments to Patent and Trademark Rules to Implement Trademark Law Revision Act;
Miscellaneous Trademark Rule Amendments, 54 FR 37562
-01, Sept. 11, 1989, effective Nov.
16, 1989.
40 Id.
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Serial No. 87168719
comparing the proposed amendment with the description or drawing of the
mark filed with the original application.41
At the same time, Trademark Rule 2.52 was amended to provide that the “drawing
depicts the mark sought to be registered.”42 37 CFR § 2.52
, quoted in In re Thrifty,
Inc., 274 F.3d 1349
,61 USPQ2d 1121, 1123
(Fed. Cir. 2001); see In re Change Wind
Corp., 123 USPQ2d 1453
, 1459 n.6 (TTAB 2017) (“the drawing of the mark, not the
words an applicant uses to describe it, controls what the mark is”).
In 2000, reading Trademark Rules 2.52 and 2.72 together, the Board declared
“under the new rules, any and all proposed amendments are subject to the material
alteration standard, and no amendment is permissible if it materially alters the mark
sought to be registered, i.e., the mark depicted on the drawing.” In re Who? Vision
Sys., Inc., 57 USPQ2d 1211
, 1217 (TTAB 2000), quoted in In re Innovative Cos.,88 USPQ2d 1095
, 1097 (TTAB 2008).
C. Current Reading of the Law Regarding Material Alteration
Under Trademark Rules 2.52 and 2.72, as they now read, the key comparison is
between the proposed amendment and the drawing of the mark in the original
application. See generally Catherine Krebs & Radhika Raju, Has the Rule Against
Material Alteration of Trademark Drawings Been Materially Altered? 90 TRADEMARK
REP. 770, 774-77 (2000). The crucial question is whether the old and new forms of the
mark create essentially the same commercial impression. Visa, 220 USPQ2d at 743-
44; In re Guitar Straps Online, LLC, 103 USPQ2d 1745
, 1747 (TTAB 2012).
41 Federal Register 1999, 64 Fed. Reg. 48900
Trademark Law Treaty Implementation Act
Changes, Sept. 8, 1999.
42 Id. at 48902
.
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Serial No. 87168719
This is a question of fact, to be evaluated from the viewpoint of an ordinary
consumer. “The commercial impression that a mark conveys must be viewed through
the eyes of a consumer.” DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd.,
695 F.3d 1247
,103 USPQ2d 1753, 1757
(Fed. Cir. 2012), quoted in Hana Fin., Inc. v.
Hana Bank, 574 U.S. 418
,113 USPQ2d 1365, 1367
(2015), cited in Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363
,116 USPQ2d 1129, 1133
(Fed. Cir. 2015). These consumers, unfamiliar
with registrations on the Principal Register, may see an applicant’s addition of his
previously registered matter as a significant change from the mark as originally filed.
Indeed, an applicant may own scores of previously registered marks, any one of which
could be appended to the root mark as originally filed. The mark as originally filed
could thereby serve as a placeholder for later amendments bearing “little resemblance
to the mark as originally filed.”43
Consequently, we hold that previous registration of matter added in a proposed
amendment is not an exception to the rule against material alteration; it is a factor
to be considered in determining whether the alteration is material. The dicta in
Nationwide suggesting otherwise has been superseded by the evolution of the
applicable Trademark Rules and case law, with the result that the current state of
the law is consistent with that taken in LaBatt. In this respect, an applicant’s
ownership of a previously registered mark is like other factors to be considered. See
In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044
, 2047 (TTAB 1990) (“The question
of whether a new search is necessitated by the amendment is a factor to be considered
43 Id.
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Serial No. 87168719
but is not the determining element of whether or not to accept the amendment.”);
LaBatt, 26 USPQ2d at 1078 (“Whether republication would be required is only one
consideration in the determination of whether a mark has been materially changed.”).
D. Application of the Law Regarding Material Alteration to the
Present Case
Applying these principles to this case, we agree with the Examining Attorney that
Applicant’s proposed amendment, adding THE LEE GREENWOOD
COLLECTION, would materially alter his original applied-for mark, GOD BLESS
THE USA. Material alteration issues arise most frequently when an applicant seeks
to add new material to his proposed mark. Pierce Foods, 230 USPQ at 308 n.2. As
Pierce Foods demonstrates, adding even one word—such as the house mark
PIERCE—to the mark in the original application can present “a materially different
mark.” Id. at 308.
In this case, adding Applicant’s “house mark,” THE LEE GREENWOOD
COLLECTION, would create an even greater difference in the sight and sound of
the original proposed mark. The additional four words would appear prominently as
the first part of Applicant’s proposed mark, the part that “is most likely to be
impressed upon the mind of a purchaser and remembered.” In re Aquitaine Wine
USA, LLC, 126 USPQ2d 1181
, 1185 (TTAB 2018) (quoting Presto Prods. Inc. v. Nice-
Pak Prods., Inc., 9 USPQ2d 1895
, 1897 (TTAB 1988)). And the additional seven
syllables would create a noticeably different pronunciation.
Adding Applicant’s house mark would, moreover, make a substantial difference in
connotation and commercial impression. Even a minor change can make a substantial
difference. See In re Yale Sportswear Corp., 88 USPQ2d 1121
, 1123 n.3 (TTAB 2008)
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Serial No. 87168719
(“UPPER 90 and UPPER 90° are significantly different in connotation….”); In re
Who? Vision, 57 USPQ2d at 1218 (“TACTILESENSE and TACILESENSE have
distinctly different commercial impressions.”). In this case, adding THE LEE
GREENWOOD COLLECTION to GOD BLESS THE USA would drastically alter
the proposed mark’s meaning and commercial impression, moving it from a
platitudinous well-wishing to a singer’s claimed signature song. And while this may
be the desired effect, it does not “create the impression of being essentially the same
mark.” Visa, 220 USPQ at 743-44. It is a new mark, bearing little resemblance to the
proposed mark for which Applicant originally applied.
Consequently, we find that Applicant’s proposed amendment to his original
applied-for mark constitutes a material alteration, and therefore is impermissible
under Trademark Rule 2.72(a)(2).
III. Conclusion
For the foregoing reasons, we find that the original applied-for mark, GOD BLESS
THE USA, fails to function as a trademark, and that Applicant’s proposed
amendment is impermissible because it would materially alter the original proposed
mark.
Decision: The refusal to register is affirmed as to both classes.
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