Tuesday, March 26, 2013

Test Your TTAB Judge-Ability: Has This Pizza Slice Mark Been Mutilated?

Hot Stuff Foods, LLC applied to register the mark shown first below, for food products and services, based on an intent-to-use. When it submitted its statement of use, it also submitted an amended drawing, shown second below. The PTO refused registration on the ground that the mark shown on the amended drawing constitutes a material alteration of the mark shown in the original drawing, in violation of Rule 2.72(a)(2). What do you think? In re Hot Stuff Foods, LLC, Serial No. 77392514 (March 8, 2013) [not precedential]

Original drawing

Amended drawing

The Examining Attorney contended that the original drawing shows a "much more stylized" version of a pizza slice. Several lines and circular designs have been deleted, and there is no shading in the original. She urged that the amended version depicts "a pretty thick crusted pizza whereas the original drawing shows a thinner crusted pizza with various toppings on it."

Trademark Rule 2.72(a)(2) provides that an applicant may amend the drawing of its mark if the proposed amendment "does not materially alter the mark." The general test is whether the change would require the mark to be republished "in order to fairly present the mark for purposes of oppostion." If the amended mark is sufficiently different to require re-publication, then the amendment is unacceptable.

The Board found that the amended drawing here is not a material alteration of the original.

The two marks create the same commercial impression: the words HOT STUFF PIZZA superimposed on a pizza slice. Although the slices of pizza in the original and amended drawings have specific differences, it must be remembered that the mark is not solely the design portion. The words HOT STUFF PIZZA are clearly the dominant part of the mark, and the nature of the mark is not changed by the proposed amendment. The modified mark contains the essence of the original mark, and the new form of the mark creates the impression of being essentially the same mark as the mark in the original drawing.

Ans so the Board reversed the refusal.

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Read comments and post your comment here.

TTABlog note: Well, how did you do?

Text Copyright 2012, Photograph Copyright 2006, John L. Welch.


At 9:37 AM, Anonymous Anonymous said...

This is another one of those doctrines like "obscenity:" the rules are so mushy that you really don't know and have to get one of the gods to tell you, after shelling out beacoups of legal fees.

At 9:51 AM, Blogger Pamela Chestek said...

Lousy. I would have thought it was a material alteration - I wouldn't necessarily view the triangle in the amended drawing as representing a slice of pizza, but I would instead see it as a geometric element.

At 11:17 AM, Anonymous Anonymous said...

This "material alteration" stuff is really very subjective.

At 11:24 AM, Blogger John L. Welch said...

Says you.

At 11:45 AM, Anonymous Orrin A. Falby said...

@Pamela - The EA made the argument that both versions of the mark contain a figurative representation of a slice of pizza. I see your point and its a good one, but neither the Board nor the EA picked up on it. I agree that if that fact was made of record, then we "might" have had a different ruling. The question is how much weight would/should be given to the design element in the analysis -- especially when the literal element is so prominent.

At 12:46 PM, Anonymous Anonymous said...

There are two standards when dealing with specimens: subsantially exact and material alteration.

Substantially exact refers to the specimen and drawing matching. As the name implies, it is perhaps the most demanding and immutable standard in trademark law. The drawing and specimen must be identical.

An equally imposing name, but far more lenient standard is "material alternation." Anticipating that trademarks do evolve and small changes are common, in addition to softening the substantially exact standard, the USPTO allows applicants to amend the drawing to match the specimen, to a point that is. In countries such as Mexico, the comparison of the mark and specimen is based on the latter material alteration. The formality of amending the mark is not required.

Presently, the alteration was not deemed to be material because it would not require republication, a standard measured by whether an examiner would have conducted a new trademark availability search based on the amendment. Although I can understand the position of the Board, I would propose the following test: would the Board have allowed the change in the reverse order? Here is where I believe the Board has taken a misstep - if the less stylized would have been amended to the more stylized version of the mark, a new search would have been required. So it is possible that material alteration is a moderately fast moving stream that allows amendments downstream but not upstream.

I do wonder whether the title "mulitation" is a misnomer. Section 807.12(d) defines mutilation as "In an application under §1 of the Trademark Act, the mark on the drawing must be a complete mark, as evidenced by the specimen. When the representation on a drawing does not constitute a complete mark, it is sometimes referred to as a 'mutilation' of the mark." I believe, although I could be entirely wrong, that mutilation is a comparison of the drawing and the specimen and not the drawing as compared to an amendment. Thoughts?

At 2:55 PM, Blogger TMAttorneyHeller said...

Since filing dates are very important, I can understand why it was appealed. In my opinion, the change was not a material alteration. If this was a registration that was being modified, would it be a material alteration?

At 7:34 PM, Blogger John L. Welch said...

As an example of the point about the difference in tests, see the FREEDOM STONE case from 2008. Applicant applied for the single word mark FREEDOMSTONE, but the specimen showed it as two words: FREEDOM STONE. The specimen was rejected because the mark in the drawing was not a substantially exact representation of the mark as used. However, applicant was allowed to amend the drawing to FREEDOM STONE, and that was considered not a material alteration of the mark on the original drawing.

At 9:27 AM, Anonymous Anonymous said...

@Annette -- Renewing a registration is different than amending a mark. See e.g., In re DeWitt Int’l Corp. , 21 USPQ2d 1620(Comm’r Pats. 1991).


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