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

[voyer@keganlaw.com]

Perhaps no new search is needed.
The original search should have included the “o” as an o in addition to the smiley image.
If the original search passed, then the simplification likely ought also.
That’s logic, not always controlling.

Daniel Kegan

> On Oct 23, 2025, at 11:09 AM, Dale Quisenberry via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:
> 
> 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
>  
> From: Jessica R. Friedman <jrfriedman at litproplaw.com <mailto: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 <mailto: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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>  
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