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

Thu Oct 23 16:15:47 UTC 2025

Because I don't at all mind being that guy [pushes glasses up on nose],
it's not a material alteration for the specimen to contain something the
drawing lacks, though it's potentially a mutilation:

[image: TMEP-10-23-2025_12_01_PM.jpg]

https://tmep.uspto.gov/RDMS/TMEP/current#/result/TMEP-800d1e1800.html?q=mutilation&ccb=on&ncb=off&icb=off&fcb=off&ver=current&syn=adj&results=compact&sort=relevance&cnt=10&index=1

The problem isn't that submitting evidence showing a smiley face where the
O would be in the drawing is the same as asking the Trademark Office to go
back and change the drawing) in potentially a material manner). The problem
is that the evidence doesn't match the drawing. But a specimen need not
match the drawing is every respect.

The question is whether, as evidenced by a specimen showing a smiley face
where the O would be in the drawing, the specimen shows use of the mark
shown in the drawing, and whether the drawing shows the complete mark.

Whether a drawing showing the letter O where the specimen shows a smiley
face is a substantially exact representation of the mark sounds like the
kind of thing we perhaps wouldn't really be able to assess without seeing
the drawing and the specimen.

Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-lawyers/certification-standard-summaries/trademark-law/>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950

On Thu, Oct 23, 2025 at 11:40 AM Jessica R. Friedman via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> That was my thought (in the first email) as well. I was just hoping
> against hope!
>
> Jessica R. Friedman
>
> Attorney at Law
>
> 300 East 59 Street, Ste. 2406
>
> New York, NY 10022
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> Phone: 212-220-0900
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> Cell: 917-647-1884
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> E-mail: *jrfriedman at litproplaw.com <jrfriedman at litproplaw.com>*
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> URL: *www.literarypropertylaw.com <http://www.literarypropertylaw.com>*
>
>
>
> [image: 1479430908386_PastedImage]
>
>
> *From: *E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf
> of Cumbow, Bob via E-trademarks <e-trademarks at oppedahl-lists.com>
> *Date: *Thursday, October 23, 2025 at 11:37 AM
> *To: *For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc: *Cumbow, Bob <Robert.Cumbow at millernash.com>
> *Subject: *Re: [E-trademarks] Changing "o" to smiley face in design mark:
> material alteration?
>
> One of the PTO’s materiality criteria is whether the change would require
> a new search. In this case it likely would, and therefore would cause
> refusal of the specimen.
> Bob
>
> Bob
>  Cumbow
> Partner
> Miller Nash LLP
> 605 5th Ave S, Ste 900 | Seattle, WA 98104
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> On Oct 23, 2025, at 8:11 AM, Dale Quisenberry via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> 
>
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> ------------------------------
>
> 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
>
> 13910 Champion Forest Drive, Suite 203
>
> Houston, Texas 77069
>
> (832) 680.5000 (office)
>
> (832) 680.1000 (mobile)
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> (832) 680.5555 (facsimile)
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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 <jrfriedman at litproplaw.com>*
>
> URL: *www.literarypropertylaw.com <http://www.literarypropertylaw.com>*
>
>
> <image001[36].png>
>
>
>
> *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 <jrfriedman at litproplaw.com>*
>
> URL: *www.literarypropertylaw.com <http://www.literarypropertylaw.com>*
>
>
> <image001[44].png>
>
>
>
>
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