TTAB Says Amendment of Mark from "BARMACHÉ" to "BARMARCHÉ" is Material Alteration
What a difference an "R" makes! Applicant Spring Cafe Realty LLC left out an "R" and consequently cannot use the "®." It misspelled its mark on its drawing page as "BARMACHÉ" rather than the correct "BARMARCHÉ." Its specimen of use displayed the mark correctly. When it attempted to correct the drawing via preliminary amendment, the PTO refused, maintaining that the correction would materially alter the applied-for mark in violation of Rule 2.72. The Board agreed with the PTO and affirmed the refusal. In re Spring Café Realty LLC, Serial No. 78536106 (October 29, 2007) [not precedential].
Rule 2.52 states that the "drawing depicts the mark sought to be registered." Under Rule 2.72, an applicant may amend the drawing only if the specimen originally filed supports the proposed amendment and the amendment does not materially alter the mark.
According to the Board's decision in In re Who? Vision Systems, Inc., 57 USPQ2d 1211, 1217-18 (TTAB 2000), "the modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark." [emphasis in original]. In Who? Vision the Board affirmed a refusal to permit amendment of the mark TACILESENSE to TACTILESENSE.
Here, the original specimens supported the proposed amendment but "the mark in the proposed amendment is a material alteration of the mark depicted in the drawing."
"Changing BARMACHÉ to BARMARCHÉ changes the commercial impression and meaning of the mark. *** The inclusion of MARCHÉ in BARMARCHÉ suggests that applicant's establishment in which it provides its restaurant and catering services has a market component. Thus, even though BARMACHÉ and BARMARCHÉ both have BAR as their initial components, we find that the commercial impression of BARMACHÉ is not essentially the same as the commercial impression of BARMARCHÉ."
The Board noted that it made no difference that Applicant sought amendment before the PTO had examined the mark. Examining Attorney Erin M. Falk correctly rejected the amendment to the mark, and she properly required that Applicant submit new specimens that agreed with the drawing.
The Board therefore affirmed the refusal to register.
TTABlog comment: Compare the Board's ruling in this case with its more lenient treatment of a post-registration amendment of the AQUA STOP mark, in a recent precedential decision here.
Text Copyright John L. Welch 2007.