Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE ABOLIO Y RUBIO S.A.C.I. Y G.
Serial No. 73/835,174
July 21, 1992
Harold D. Steinberg of Steinberg & Raskin for applicant.
Patricia A. Malesardi
Trademark Examining Attorney
Law Office 14
(R. Ellsworth Williams, Managing Attorney)
Before Rooney, Simms and Seeherman
Members
Opinion by Seeherman
Abolio y Rubio S.A.C.I. y G. originally applied to register the mark LA PAULINA, as a typed drawing, for milk products, namely cheese. [FN1] After the Examining Attorney finally refused registration on the ground that the mark was materially different from the mark in the Argentine registration upon which the U.S. application was based, applicant sought to amend the mark to the design mark depicted below. The Examining Attorney refused to allow this amendment because it would materially alter the character of the mark, and subsequently made this refusal final.
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Applicant has appealed.
Before we discuss the issues on the merits, we think a comment is required about procedure. The Examining Attorney treated applicant's proposed amendment of the drawing as raising a new issue, and therefore, even though she had previously made final the refusal to register on the ground that applicant's mark was not a substantially exact representation of the mark in the foreign registration certificate, she did not make the refusal to accept the amended drawing final until applicant had an opportunity to respond. We confirm that the Examining Attorney acted appropriately, and that the proposal to amend the drawing did raise a new issue. See, Trademark Rule 2.64(a) and In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986).
Turning now to the initial basis for refusal, Trademark Rule 2.51(a)(3) provides that in an application under Section 44, the drawing of the trademark shall be a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark registered in the applicant's country of origin. There seems to be no question that the typed drawing for LA PAULINA is not a substantially exact representation of the mark, reproduced below, which appears in the drawing in applicant's foreign registration.
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Applicant does not even argue this point in its brief. Moreover, the present case is very similar to the situation presented in United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481 (TTAB 1988), in which the Board held that the mark LEMON BREEZE, shown in a typed drawing in the U.S. application, was not materially the same as the LEMON BREEZE and design mark, shown below, which was depicted in the South African registration upon which the U.S. application was based.
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This brings us to the second question presented by this appeal, namely, whether the Examining Attorney erred in refusing to allow applicant to amend its drawing so that the mark would be a substantially exact representation of the mark in the Argentine registration.
*2 Trademark Rule 2.72(a) provides that amendments may not be made to the description or drawing of the mark if the character of the mark is materially altered. The Board has previously articulated a test for determining whether a change in a mark is material:
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. The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application. Visa International Service Assn. v. Life-Code Systems, 220 USPQ 740, 743-44 (TTAB 1983).
Following this test, we find that the additional design elements in applicant's proposed drawing constitute a material alteration of the typed drawing LA PAULINA. The prominent pictorial elemnets result in a mark which creates a very different impression from the words LA PAULINA alone. See, In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (addition of crown design and banner design bearing the words IN VINO VERITAS in a material alteration of typewritten word mark THE WINE SOCIETY OF AMERICA); In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (SNAP RUST BUSTER is a material alteration of RUST BUSTER); In re Pierce Foods Corp., supra (addition of PIERCE to CHIK'N-BAKE and design is a material alteration).
Applicant argues that the drawing of the mark in the foreign registration warrants the amendment to the drawing, pointing to subsection (d) of Trademark 2.72 as a basis for amendment of the drawing. That section states:
In applications under section 44 of the Act, amendments to the description or drawing of the mark may be permitted only if warranted by the description or drawing of the mark in the foreign registration certificate.
We decline to read Rule 2.72(d) so broadly as to allow any amendment to the drawing in the U.S. application so long as the amendment is supported by the mark in the foreign registration. Rather, this subsection must be read in conjunction with Rule 2.72(a) which, as noted above, prohibits an amendment to the drawing if the amendment would constitute a material alteration of the character of the mark. Otherwise, there would be no reason for subsection (a) to be included in Rule 2.72. That is, if the drawing in any Section 44 application could be amended as long as the amendment was warranted by the mark in the foreign registration, the additional limitation in subsection (a) would be superfluous. Rule 2.72(a) and (d) together evidence a requirement that the drawings of applications based on Section 44 may be amended only if the character of the mark is not materially altered, and if the amendment is warranted by the drawing or description of the mark in the foreign registration, just as Rule 2.72(a) and (b) evidence a requirement that drawings of applications based on Section 1(a) may be amended only if the character of the mark is not materially altered, and the amendment is warranted by the specimens.
*3 Applicant has also referred to Section 807.14(a) of the Trademark Manual of Examining Procedure, which is entitled "Acceptance of Amendment Determined by Examining Attorney":
An amendment may not be made if the mark is materially altered by the amendment. 37 CFR § 2.72. This possibility more frequently arises when matter is added to the mark than when matter is deleted from the mark. It is for the Examining Attorney to decide whether the mark is materially altered by the amendment. The rule should be applied with flexibility, in order not to create a burden for the Examining Attorney in making additional searches and in order not to create a burden for the applicant in filing additional applications.
Applicant points to the language of this section which states that the rule should be applied with flexibility, and argues that there would be no burden on the Examining Attorney if the amendment were allowed, while to deny the amendment would create a burden for the applicant.
The Board has previously stated that the admonishment to apply the rule with flexibility is not the standard to be applied in deciding whether to accept an amendment. In re Vienna Sausage Manufacturing Co., 16 USPQ2d 2044 (TTAB 1990). Moreover, as a result of the Board's recommendation in In re Wine Society of America Inc., supra, Trademark Examining Guide No. 2-89, was issued on October 6, 1989, in order to replace that section of the Trademark Manual in its entirety. These revisions will be incorporated into the Trademark Manual with the next revision.
Decision: The refusal to register on the basis that applicant's drawing is not a substantially exact representation of the drawing in the foreign registration certificate, and the refusal to accept applicant's amended drawing are affirmed.
L.E. Rooney
R.L. Simms
E.J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/835,174, filed October 31, 1989 pursuant to Section 44(e) of the Trademark Act, based on an Argentine registration.