CTB, Inc.

Trademark Trial and Appeal Board

Aug 31, 1999

No. 74136476 (T.T.A.B. Aug. 31, 1999)

Paper No. 27
DEB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re CTB, Inc.
________
Serial No. 74/136,476
_______
David J. Marr of Trexler Bushnell Giangiorgi & Blackstone,
Ltd. for CTB, Inc.
Radhika Raju, Trademark Examining Attorney, Law Office 109
(Ron Sussman, Managing Attorney).
_______
Before Sams, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
CTB, Inc., an Indiana corporation, filed an
application for registration of the mark “TURBO and
design,” as shown below, for “ventilation systems for
poultry and livestock houses comprising electric blowers,
ducts and controls”1:

1 Serial No. 74/136,476, in International Class 11, filed
February 5, 1991, based upon an allegation of a bona fide
Ser No. 74/136,476
2
The mark published for opposition in the Trademark
Official Gazette on July 7, 1992 having this special form
drawing. Although Seabreeze Electric Corporation filed
Opposition Number 90,374 in December 1992, that proceeding
was dismissed on March 4, 1994. This was done with
opposer’s consent following an amendment to applicant’s
identification of goods that the parties had agreed upon.2
Then in February 1997 at the time applicant filed its
statement of use (claiming use on September 20, 1996),
applicant requested that the mark be amended to a typed
drawing (merely “TURBO”). This was consistent with the
specimens of record, where the mark was shown in context as
follows:

intention to use the mark in commerce. Although the original
intent to use application included goods in International Classes
6 and 7, applicant deleted these goods in February 1996 as part
of the third request for an extension of time to file a statement
of use.
2 The term “fans” in applicant’s original identification of
goods was changed to “blowers.”
Ser No. 74/136,476
3
At that point, the Trademark Examining Attorney
refused to accept applicant’s request that it be allowed to
amend its drawing to conform the mark to the newly
submitted specimens of record, on the ground that such an
amendment would constitute a material alteration of the
mark, and hence was precluded by the Trademark Rules.
Specifically, 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.3
Applicant has appealed the continuing refusal to amend
the mark and that issue is the sole subject of this appeal.
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested. We affirm
the refusal to register inasmuch as we agree with the
Trademark Examining Attorney that this proposed amendment

3 Section 2.72 states.
(a) Amendments may not be made to the description or
drawing of the mark if the character of the mark is
materially altered. The determination of whether a
proposed amendment materially alters the character of
the mark will be made by comparing the proposed
amendment with the description or drawing of the mark
as originally filed.
Ser No. 74/136,476
4
to the drawing alters significantly the overall commercial
impression of this mark.
Applicant argues that the mark as it appears on the
specimens of use and as applicant seeks to change it
(“TURBO”), does not constitute a material alteration of the
mark from the special form shown on the drawing page of the
original application. In support of this contention,
applicant argues that the word “TURBO” is the essence of
both forms of applicant’s mark. Accordingly, applicant
takes the position that presenting the mark now in
typewritten form creates the same commercial impression as
did the original drawing. Further, applicant argues that
since the word “turbo” shares some of the same etymological
roots as the word “whirlwind,” the swirling design
comprises nothing more than a mere embellishment that
reinforces the word “turbo” before fading into the
background. As to the interests of any third parties,
applicant argues that potential opposers would be concerned
about the word “Turbo” and therefore no republication of
the mark as amended would be required under the law.
Applicant points out that many of the recorded cases
finding material alteration deal with amendments where the
amended form of the mark contained additions while, in the
Ser No. 74/136,476
5
instant case, applicant is trying to delete matter from the
original drawing.
The Trademark Examining Attorney points out that the
swirling design applicant seeks to delete is not just some
unidentifiable graphic. Rather, applicant itself has
referred to the feature as a “…design in the form of a
common cyclone or tornado.” The Trademark Examining
Attorney argues that:
The applicant’s original mark, a swirling
tornado design with the stylized wording
TURBO, creates a different commercial
impression from just the word TURBO in block
letter form. The tornado design is not a
background design. In fact, this design is
the first thing a consumer would notice when
viewing the mark both because it is on the
left-hand side and … because it is a dark
swirling pattern that immediately catches
the eye. (brief, pp. 2 – 3).
The Trademark Examining Attorney concludes that
“[c]learly, the tornado design is an integral part of
applicant’s mark and deletion of this portion would create
a different commercial impression and therefore constitutes
a material alteration.” (Trademark Examining Attorney’s
appeal brief, p. 3).
In looking more closely at Rule 2.72(a), we note that
the touchstone for permissible amendments to the mark is
that the mark retains the same overall commercial
impression. See Visa International Service Assn. v. Life-
Ser No. 74/136,476
6
Code Systems, 220 USPQ 740, 743-44 (TTAB 1983) [“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…”].
While there is necessarily some subjectivity in
applying this standard to a particular fact pattern, we
look to past decisions to guide us in making this
determination. It is also important to note that when
making a determination about material alteration during the
ex parte examination process, the Trademark Examining
Attorney must make a distinction between two categories of
amendments. See In re ECCS, Inc., 94 F.3d 1578, 39 USPQ2d
2001 (Fed. Cir. 1996). In the first category are
amendments to the drawing proposed in order to conform the
original drawing to the mark sought to be registered as
shown by the specimens as filed with the application –
i.e., showing the mark as actually used. This first
category of amendments, as defined in ECCS, is also broad
enough to include an internal inconsistency between the
version shown in the drawing and that shown on the foreign
registration certificate filed with the U.S. application,
if the U.S. trademark application is based upon a foreign
registration under Section 44(e) of the Act. See In re
Ser No. 74/136,476
7
Dekra e.V., 44 USPQ2d 1693 (TTAB 1997).4 Our principal
reviewing court found in such cases that amendments
involving a mark in the drawing slightly different from the
mark displayed on the specimens should be permitted under
Trademark Rule 2.72. However, the second category involves
amendments that attempt to change the drawing of the mark
in the application as originally filed where there has been
no ambiguity about the mark. This would include use-based
applications where there is clearly no inconsistency
between the specimens and drawing as originally filed.
In the instant case, there was no ambiguity as to the
mark identified in the application papers as originally
filed. As in In re Finlay Fine Jewelry Corp., 41 USPQ2d
1152 (TTAB 1996), this case involves an attempt to amend
the mark after an unambiguous, intent to use application
had been filed. As noted in Finlay, an amendment to the
drawing subsequent to the filing date, even to reflect the
mark as used later by applicant, falls into the second ECCS
category of amendments to drawings.

4 Contrast this result with the situation in In re Hacot-
Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997) where
the applicant filed the U.S. application claiming a right of
priority under Section 44(d). Here, the only mark shown in the
application as originally filed appeared on the drawing page.
There, the file did not contain the foreign registration
certificate showing the foreign mark until ten months after the
original filing date.
Ser No. 74/136,476
8
Applicant argues that on the substantial question of
material alteration we are asked to decide herein, its case
is similar to the facts of Finlay. In that case, the
question was whether it was a permissible amendment under
Rule 2.72(a) to change the typed drawing, “NY JEWELRY
OUTLET” to another typed drawing spelling out “NY…” e.g.,
“NEW YORK JEWELRY OUTLET.” However, most consumers would
have verbalized the “NY” portion of the mark in the
original drawing as “NEW YORK” in any case. Accordingly,
we find those facts cannot be deemed analogous to the
present case.
Both the Trademark Examining Attorney and applicant
have cited to Visa International Service Assn. v. Life-Code
Systems, supra. Like the facts in Finlay, the amendment in
Visa involved minor changes. The marks in that case
involved identical designs and words, where the elements
were merely rearranged.
The inversion of the triangular device (to reverse the
visual impact of the airplane’s ground-ward orientation!)
is a change that most consumers might be hard-pressed even
Ser No. 74/136,476
9
to notice. In the Visa case, the Board correctly perceived
these technical changes in the logo design to be de minimis
since the two marks created an identical commercial
impression.
Applicant also relies on In re Larios, 35 USPQ2d 1214
(TTAB 1995). The requested amendment was as follows:
The Board agreed with applicant that this amendment
was permissible since it did not comprise a material
alteration. Specifically, the relative size of the words
“GRAN VINO” and “VINO DE,” the fact that they are common
designations for wine, and their arrangement in relation to
the dominant, source-indicating matter (e.g., “MALAGA
LARIOS”) located on otherwise identical, tombstone-shaped
Ser No. 74/136,476
10
labels, all pointed to a correct conclusion that the
commercial essence of the two labels was the same.
Citing to another case where the amendment was indeed
permitted, applicant points to Dekra, supra, where the
following amendment was permitted:

However, we note that in the event that case had
fallen into the second category of ECCS fact patterns, as
does the current case, the Board would have certainly found
there to be material alteration between these marks:
We would agree that an amendment of the mark
to DEKRA and D design would be a material
alteration of the D design, if the D design
were, in fact, the mark for which
application had been made…” Dekra, supra at
1696.
While the outcome of In re Abolio y Rubio
S.A.C.I. y G, 24 USPQ2d 1152 (TTAB 1992), like Dekra, might
well be different if decided today in view of ECCS, one
Ser No. 74/136,476
11
notes immediately a contrast in the visual impressions of
the following respective marks:
In Abolio, the Board found that the prominent
pictorial elements in applicant’s proposed amended drawing
above (e.g., a label containing a cartoon-like, young girl
standing on a cross section of cheese) constituted a
material alteration from the typed drawing, “LA PAULINA”
alone, as it created a very different impression. See
also, 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” is a material
alteration of typewritten word mark “THE WINE SOCIETY OF
AMERICA”]; In re Pierce Foods Corp., 230 USPQ 307, 308-309
(TTAB 1986) [addition of house mark, “PIERCE,” to product
mark “Chik’n-Bake and design” is a material alteration]; In
re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990)
[Because of a likelihood of confusion refusal, applicant
LA PAULINA
Ser No. 74/136,476
12
sought to amend its application by penciling the
designation “MR. SEYMOUR” into the wiener chef’s cap.]
The Trademark Examining Attorney was upheld in that
the Board found that this change involved a material
alteration.
We also note a decision by the Commissioner of the
U.S. Patent and Trademark Office having the following
request for amendment, where material alteration was found
to exist:
It is clear from a comparison of the
registrant's mark as registered in 1950 and
the current mark now presented under Section
7(d), that the latter represents a material
alteration from the mark as originally
registered. The letters R and W in the mark
as registered were greatly emphasized by
their size and the bracketing around them.
Such a portrayal of these letters
effectively made the mark “FYER-WALL”
recognizable as “RW FYER-WALL.” This
emphasis on the letters R and W is dropped
by the proposed amendment and the overall
appearance of the mark is changed. A
FYER-WALL
Ser No. 74/136,476
13
modification of the mark which eliminates
such a prominent feature represents a
material alteration of the character of the
mark which renders the amendment
unacceptable under Section 7(d). See In re
E. M. Townsend & Co., 143 USPQ 318 (Comr.,
1964).
In re Richards-Wilcox Manufacturing Co., 181 USPQ 735
(Comr.Pats. 1974).
Similarly, in a more recent decision from the
Commissioner (e.g., proposed deletion of highly stylized
display features of mark “IN•VEST•MENTS”), the petitioner
made arguments similar to those made by applicant herein:
[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 word mark.
The Commissioner found as follows:
…[C]onsideration of only the terminology
contained in a mark is not the test to
determine whether a proposed amendment
constitutes a material alteration… Contrary
to petitioner's assertion of "a minimal
background framing design," clearly the
registered mark contains salient design
features apart from the word portion…
Ser No. 74/136,476
14
In re Dillard Department Stores Inc., 33 USPQ2d 1052 (Comr.
Pats. 1993).
In reviewing these cases, we agree with applicant that
many of the reported cases finding material alteration do
involve attempts to add new material to the mark.5 By
contrast, the instant case involves deleting material from
the mark. However, we find that the deletion of matter
from a mark should be evaluated according to the same
standard as a proposed addition to the mark.
For example, the Office often finds that the deletion
of the generic name of the goods (e.g., from “TURBO
BLOWERS” to simply “TURBO”) would not generally constitute
a material alteration (unless it was so integrated into the
mark that the deletion would alter the commercial
impression). Similarly, sometimes even descriptive or
other types of nondistinctive matter may be deleted, if the
overall commercial impression is not altered. We find,

5 The original drawing in a trademark application serves the
purpose of putting third parties on notice while establishing for
applicant a contingent, constructive date of first use on a
nationwide basis. Public policy arguments (e.g., those
surrounding the need to provide meaningful notice to third
parties who search the Office records) are arguably greater if
entirely new matter is being added by way of an amended drawing.
However, given that each case of likelihood of confusion is
decided on the marks in their entireties, deletions of matter
should be judged by the same standard of overall commercial
impression.
Ser No. 74/136,476
15
however, that the swirling cyclone design in the instant
case has to be deemed to be distinctive matter.
Both the Trademark Examining Attorney and applicant
discuss the degree of “integration” of the swirling design.
For example, the Trademark Examining Attorney contends that
“[t]he design is an integral part of the word portion of
the mark, because it is attached to the crossbar of the
letter “t” in TURBO.” While we agree that the swirling
device is an essential part of the original mark and hence
“integrated” into the composite, whether or not the tip of
the funnel physically touches the crossbar of the letter
“t” is not the sole criterion leading us to this result.
Decision: We sustain the refusal to register,
inasmuch as applicant’s attempt to amend the drawing as set
out herein would result in a material alteration.
J. D. Sams
C. E. Walters
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board