[E-trademarks] Changing "o" to smiley face in design mark: material alteration?

Thu Oct 23 15:09:28 UTC 2025

I think there is a good chance it would deemed a material alteration as creating a different commercial impression.

1609.02(a)    Determining What Constitutes Material Alteration of Mark
Section 7(e) of the Trademark Act, 15 U.S.C. §1057(e)<https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-68a29dc2-ade9-4217-aef2-85676e8765f7.html>, prohibits an amendment that materially alters the character of the mark.  "Material alteration" is the standard for evaluating amendments to marks at all relevant stages of processing, both during examination of the application and after registration. See 37 C.F.R. §§2.72<https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-19d4f7ad-4e15-4f07-9e86-75078aba6c8a.html>, 2.173(d)<https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-b1231656-8570-4b80-8ffc-2b710bab2941.html>; TMEP §807.14<https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-800d1e1885.html>.
In determining whether a proposed amendment is a material alteration of a registered mark, the USPTO will always compare the proposed amendment to the mark as originally registered.
The general test of whether an alteration is material is whether, if the mark in an application for registration had been published, the change would require republication in order to present the mark fairly for purposes of opposition.  If republication would be required, the amendment is a material alteration.
An amendment of a registered mark is acceptable if the modified mark contains the essence of the original mark (i.e., the mark as originally registered), and the mark as amended creates essentially the same impression as the original mark.   In re Umax Data Sys., Inc., 40 USPQ2d 1539 (Comm’r Pats. 1996).  For example, in marks consisting of wording combined with a design, if the word is the essence of the mark and the design is merely background embellishment or display that is not integrated into the mark in any significant way, the removal or change of the design will not be a material alteration of the mark.   See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953).  On the other hand, if a design is integrated into a mark and is a distinctive feature necessary for recognition of the mark, then a change in the design would materially alter the mark.   See In re Dillard Dep't Stores, Inc., 33 USPQ2d 1052 (Comm’r Pats. 1993) (proposed deletion of highly stylized display features of mark "IN•VEST•MENTS" held to be a material alteration); Ex parte Kadane-Brown, Inc., 79 USPQ 307 (Comm’r Pats. 1948) (proposed amendment of "BLUE BONNET" mark to delete a star design and to change the picture of the girl held a material alteration).
When a mark is solely a picture or design, an alteration must be evaluated by determining whether the new form has the same commercial impression as the original mark, i.e., whether the form as altered would be likely to be recognized as the same mark.   See Ex parte Black & Decker Mfg. Co., 136 USPQ 379 (Comm’r Pats. 1963) (proposed amendment to delete circle found to be a material alteration, where the circle was determined to be a prominent element of a design mark).
Marks entirely comprised of words can sometimes be varied as to their style of lettering, size, and other elements of form without resulting in a material alteration of the mark. See Ex parte Squire Dingee Co., 81 USPQ 258, recon. denied, 81 USPQ 543 (Comm’r Pats. 1949) (amendment from block lettering to script not a material alteration).  However, changing from special form to standard characters, or the reverse, may be a material alteration. TMEP §807.03(d)<https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-800d1e1238.html>.
A generic or purely informational term may be deleted if the essence of the mark in appearance or meaning is not changed, but a word or feature that is necessary to the significance of the mark may not be deleted.  Likewise, a unique or prominent design feature may not be deleted.   See In re Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm’r Pats. 1974), overruled on other grounds, In re Umax Data Sys., Inc., 40 USPQ2d 1539 (Comm'r Pats. 1996) (proposed amendment to block lettering from mark comprising a diamond design surrounding the word "FYER-WALL" with an inverted channel bracket around the letters "RW" held a material alteration).  See TMEP §807.14(a)<https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-800d1e1905.html> regarding amendments deleting matter from a mark.

C. Dale Quisenberry
Quisenberry Law PLLC
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Houston, Texas 77069
(832) 680.5000 (office)
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www.quisenberrylaw.com<http://www.quisenberrylaw.com>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Jessica R. Friedman via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Thursday, 23 October 2025 at 9:59 am
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Jessica R. Friedman <jrfriedman at litproplaw.com>
Subject: Re: [E-trademarks] Changing "o" to smiley face in design mark: material alteration?
Hi, no opinions or even any thoughts about whether a specimen of a stylized word mark that shows the letter “o” as a smiley face, instead of the original letter “o,”  will result in a rejection on the ground of material alteration?

Jessica R. Friedman

Attorney at Law

300 East 59 Street, Ste. 2406

New York, NY 10022

Phone: 212-220-0900

Cell: 917-647-1884

E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>

URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

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From: Jessica R. Friedman <jrfriedman at litproplaw.com>
Date: Thursday, October 16, 2025 at 10:53 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Subject: Changing "o" to smiley face in design mark: material alteration?
Client filed an ITU application (on its own) to register a stylized version of a word with the letter “o” in it. But on the actual packaging, Client substituted a smiley face for the letter “o.” So any specimen will have the smiley face.

I’m concerned that this is a material alteration that will result in rejection of the specimen (since the PTO did not search for marks with smiley faces). Has anyone dealt with this particular problem?

Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

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