[E-trademarks] Renewal Specimen

[Pamela Chestek]

I tend to agree although, as always, it depends on what the design is. 
If it is a simple dot in the middle of the O, perhaps not. But given 
that someone decided to register the design version rather than the 
word, assuming it was a thoughtful decision, that all leads me to 
believe that there is a material difference.

But there's no reason (except money) not to file the 8&15 and 
concurrently file a new word mark application, assuming they don't 
already have one.

Pam

Pamela S. Chestek
Chestek Legal
4641 Post St.
Unit 4316
El Dorado Hills, CA 95762
+1 919-800-8033
pamela at chesteklegal.com
www.chesteklegal.com

On 9/25/2025 7:17 AM, Cumbow, Bob via E-trademarks wrote:
> Probably a material alteration because it would require a new search 
> to see if removal of the graphic renders the mark confusingly similar 
> to a prior-registered mark from which the graphic made it distinct.
> Bob
>
> Bob
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>> On Sep 25, 2025, at 7:10 AM, Mark F. Warzecha via E-trademarks 
>> <e-trademarks at oppedahl-lists.com> wrote:
>>
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>> Client’s registration covers a combined word/design mark.  The O in 
>> the word portion contains graphics.  Client has removed the  graphics 
>> from the O in the mark.  Current use of the mark is just a word mark. 
>> Acceptable specimen or a material alteration for Section 8 & 15 
>> purposes?
>>
>> Responses greatly appreciated.  Thank you.
>>
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