Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
RE: TRADEMARK REGISTRATION OF DILLARD
DEPARTMENT STORES, INC.
93-151
August 9, 1993
*1 Petition Filed: May 3, 1993
For: IN VEST MENTS and Design
Registration No. 1,207,354
Issued: September 7, 1982
Robert M. Anderson
Acting Assistant Commissioner for Trademarks
On Petition
Dillard Department
Stores, Inc. has petitioned the Commissioner, pursuant to Trademark Rule 2.146, to grant its request to
amend the mark of the above registration.
Facts
Registration No.
1,207,354 issued on September 7, 1982 for the design mark presented below for
"pants, skirts, blazers, sweaters, and blouses" in Class 25. On April
12, 1988, petitioner timely filed a combined declaration under Sections 8 and
15 of the Trademark Act, 15 U.S.C. § §
1058 and 1065, which the affidavit/renewal examiner accepted on
September 21, 1988.
On May 14, 1992,
petitioner filed a request to amend the mark pursuant to Section 7(e) of the
Trademark Act, 15 U.S.C. § 1057(e). The
original mark and the proposed amended mark are shown below:
In a letter dated July 27, 1992, the
post-registration examiner notified petitioner that, among other things, the
amendment of the mark was not acceptable because it constituted a material
alteration of the mark, prohibited by Section 7(e).
On January 27, 1993,
petitioner filed a response in which it argued for acceptance of the proposed
amendment. On February 26, 1993, petitioner filed a certified copy of the
registration, as required by Trademark Rule 2.173.
In a letter dated March 4, 1993, the post-registration examiner notified
petitioner of the continuation of the refusal to accept the amendment to the
mark and, also, that petitioner's recourse was to petition the Commissioner to
review the decision. The subject petition followed on May 3, 1993.
Decision
Section 7(e) of the
Trademark Act authorizes the Commissioner, for good cause, to permit a
registration to be amended, provided that the amendment does not materially
alter the character of the mark. See also Trademark Rule 2.173(a) and Trademark
Manual of Examining Procedure (TMEP) §
1607.02 et seq. Requests for an amendment are handled in the first
instance by an examiner in the Post Registration Section of the Patent and
Trademark Office (the Office). Trademark Rule 2.176.
An amendment to a
registered mark may be accepted only if the modified mark is essentially the
same as the registered mark. Deleting or changing a feature of a registered
mark is permitted only if the feature is not an integral part of the mark, such
that its elimination or change will not materially alter the character or
commercial impression of the mark. Eliminating or changing a prominent feature
often results in a material alteration prohibited by Section 7. In re
Richards-Wilcox Manufacturing Co., 181 USPQ 735 (Comm'r Pats. 1974); Ex parte Black & Decker Mfg. Co.,
136 USPQ 379 (Comm'r Pats.1963); and Ex parte Kadane-Brown, Inc., 79 USPQ 307
(Comm'r Pats.1948). See also Holland America Wafer Company, 737 F.2d 1015, 222
USPQ 273 (Fed.Cir.1984); In re E.M. Townsend & Co., 143 USPQ 318 (Comm'r
Pats.1964); TMEP § 1207.02(a); and
Examination Guide 2-89, titled "Drawings of Marks," which issued on
March 12, 1990.
*2 Petitioner
seeks to amend the registered mark by eliminating features, such as: (1) the
overall triangular appearance, (2) the syllabication in which syllables are
separated by dots and appear on different lines, in a step fashion, and (3) a
series of 30 dots which form a 90-degree wedge that frames the syllables,
completing two sides of the triangle. Petitioner's new drawing presents a
mostly rectangular mark which has a solid border and the singular term,
"investment," in a new type style.
Petitioner argues the
following:
[T]hat the current mark
as registered is one hyphenated word with a minimal background framing design.
The amendment at issue merely removes the hyphens in the registered mark and
maintains the commercial impression of one word-- the word "investments."
As amended no change is made in the meaning of the wordmark.
However, consideration of
only the terminology contained in a mark is not the test to determine whether a
proposed amendment constitutes a material alteration,
as discussed above. Contrary to petitioner's assertion of "a minimal
background framing design," clearly the registered mark contains salient
design features apart from the word portion. Moreover, the manner in which the
mark presents syllables on separate lines, instead of a singular term, is also
significant in creating the commercial impression of the mark. With respect to
meaning alone, for example, the syllabication and unique layout could lead
someone to view the mark as a play on the terms "in" and
"vestments," especially when considering that the recited goods are
garments. Petitioner acknowledges this connotation. [FN1]
Trademark Rule 2.176
permits a registrant to petition the Commissioner for review of an adverse
action by an examiner on a request for amendment of a mark. However, the
Commissioner will reverse the action of an examiner in a case such as this only
where there has been a clear error or abuse of discretion. In re
Richards-Wilcox Manufacturing Co., 181 USPQ 735 (Comm'r Pats.1974) and Ex parte
Peerless Confection Company, 142 USPQ 278 (Comm'r Pats.1964). In the instant
case there is no showing of clear error or abuse of discretion on the part of
the examiner. Instead, the proposed changes eliminate prominent features of the
mark and, thus, it was reasonable for the post- registration examiner to
concluded that the commercial impression of the amended mark was materially
different from the mark as registered. [FN2]
Accordingly, the petition
is denied. The registration file will be returned to the Post Registration Section for further
processing.
FN1. Petitioner also argues that the amendment should be permitted
since Office correspondence and search data bases have referred to the mark as
"IN.VEST.MENTS and Design." However, a general listing of a mark,
which is merely intended to provide verbatim terminology and indicate the
format of the drawing, is irrelevant to determining whether a proposed
amendment constitutes a material alteration of a mark. The mark is what is
actually depicted in the drawing, not the information provided in a brief
description.
FN2. Petitioner also appears to argue that because the Office
previously accepted its combined Sections 8 and 15 declaration, wherein a
specimen bearing the new mark was submitted, the Office should also permit the
subject proposed amendment to the mark under Section 7. However, the question
of whether a specimen supports a claim of current use of a registered mark is
different from the question of whether an amendment to a mark is permissible
under Section 7. Although a significant design element in a mark cannot be
changed under Section 7, it does not necessarily follow that a specimen showing
use of a composite mark comprised of both word and design elements is
insufficient to support a claim of use in commerce for purposes of renewal. In
re DeWitt International Corp., 21 U.S.P.Q.2d 1620 (Comm'r Pats.1991).