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

[Alex Butterman]

So if the original drawing were in standard characters and showed only the letter O, that would cover the use of the mark with a smiley face added to the O because that is merely adding a design element in the use of the mark that was applied for as only a word mark with all stylizations and design elements allowed (that does not change the word mark). But you said the original drawing was a stylized word mark or a special form drawing so I agree that the material alteration or mutilation analysis would apply here.

Alex Butterman
Partner
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of voyer--- via E-trademarks
Sent: Thursday, October 23, 2025 12:29 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: voyer at keganlaw.com <daniel at keganlaw.com>
Subject: Re: [E-trademarks] Changing "o" to smiley face in design mark: material alteration?

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<mailto: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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