Guitar Straps Online, LLC

Trademark Trial and Appeal Board

Aug 9, 2012

No. 85047191 (T.T.A.B. Aug. 9, 2012)

Oral Hearing: May 9, 2012 Mailed: August 9, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Guitar Straps Online, LLC
________

Serial No. 85047191
_______

Sabrina C. Stavish and Pamela N. Hirschman of the law firm
Sheridan Ross PC for applicant.

Simon Teng, Trademark Examining Attorney, Law Office 105 (Thomas
G. Howell, Managing Attorney).
_______

Before Grendel, Ritchie, and Lykos, Administrative Trademark
Judges.

Opinion by Lykos, Administrative Trademark Judge:

On May 25, 2010, Guitar Straps Online, LLC (“applicant”)
filed an application pursuant to Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), to register the mark GOT STRAPS in
standard character format for “bumper stickers” in International
Class 16 and “online retail store services featuring straps for
musical instruments and accessories for musical instruments” in
International Class 35.1 Following publication of the mark in
the Official Gazette and issuance of a notice of allowance, on
This Opinion is a
Precedent of the TTAB
Serial No. 85047191
2
April 2, 2011, applicant filed a statement of use displaying the
mark on the specimens as GOT STRAPS? with a proposed amendment
to the original drawing to add the question mark.
Applicant appeals the Trademark Examining Attorney’s final
refusal to register applicant’s mark on the Principal Register
on the grounds that applicant’s proposed amendment constitutes a
material alteration of the original mark pursuant to Trademark
Rule 2.72(b)(2) and that the mark in the drawing is not a
substantially exact representation of the mark as used on the
specimens under Trademark Rule 2.51(b). For the reasons
explained below, we affirm both refusals to register.
First, we will discuss the examining attorney’s refusal to
register on the ground that applicant’s proposed amendment to
add a question mark to the drawing constitutes a material
alteration of the original mark. If the amendment is permitted
the mark on the drawing and specimen will match and the
alternative ground for refusal will be moot. Trademark Rule
2.72(b) provides as follows:
In an application based on a bona fide intention to
use a mark in commerce under section 1(b) of the Act,
the applicant may amend the description or drawing of
the mark only if:

(1) The specimens filed with an amendment to allege
use or statement of use, or substitute specimens

1 Application Serial No. 85047191. The term STRAPS has been disclaimed
as to International Class 35.
Serial No. 85047191
3
filed under § 2.59(b), support the proposed
amendment; and

(2) The proposed amendment does not materially alter
the mark. The Office will determine whether a
proposed amendment materially alters a mark by
comparing the proposed amendment with the
description or drawing of the mark filed with the
original application.

Thus, as per the language of the rule, the key to deciding this
question involves a comparison of the proposed amendment with
the description or drawing of the mark as originally filed. The
test for determining a material alteration has been articulated
as follows:
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.
In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526
(Fed. Cir. 1997), quoting Visa Int’l Service Ass’n v. Life-Code
Systems, Inc., 220 USPQ 740, 743-44 (TTAB 1983). Also, as has
often been stated, the addition of any element that would
require a further search generally will constitute a material
alteration. In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986).2

2 Both applicant and the examining attorney in their briefs imply that
republication of a mark is necessary only when a new search for
conflicting marks by the examining attorney is required. The case
law, however, makes a subtle distinction between these two factors.
Serial No. 85047191
4
We emphasize, however, that the question of whether a new search
would be required is merely one factor to be considered in
deciding whether an amendment would materially alter a mark; it
is not the “controlling” factor. In re Who? Vision Systems,
Inc., 57 USPQ2d 1211, 1218 (TTAB 2000). See also In re Vienna
Sausage Manufacturing Co., 16 USPQ2d 2044, 2047 (TTAB 1990); In
re Tetrafluor Inc., 17 USPQ2d 1160, 1162 (TTAB 1990). Rather,
the primary question is whether the proposed amendment contains
“the essence of the original mark” and whether it creates “the
impression of being essentially the same mark.” In re Who?
Vision Systems, Inc., 57 USPQ2d at 1218. In other words, “the
new and old forms of the mark must create essentially the same
commercial impression.” Id., quoting In re Nationwide
Industries Inc., 6 USPQ2d 1882, 1885 (TTAB 1988).
With this in mind, we now analyze the issue before us –
does the proposed addition of a question mark after the word
“STRAPS” constitute a material alteration?

See, e.g., In re Pierce Foods Corp., 230 USPQ 307, 308-9 (TTAB
1986)(“It seems obvious that the addition of applicant's house mark
creates a mark so sufficiently different from the original mark that
it would not only require republication, if the mark had already been
published, but also would require a new search by the Examining
Attorney for possible references.”). Compare In re Nationwide
Industries, Inc., 6 USPQ2d 1882, 1885 (TTAB 1988), citing Florasynth
Laboratories, Inc. v. Mulhens, 122 USPQ 284 (Comm’r Pats. 1959)
(amendment to drawing to add previously registered matter for the same
goods or services as those listed in the application does not
constitute a material alteration, nor does it require a new search or
republication, and the amendment is therefore permissible).
Serial No. 85047191
5
Applicant contends that the essence of the original mark
remains unchanged because it is “merely adding punctuation to
its mark.” Applicant’s Brief, p. 7. Applicant argues that “the
commercial impression of Applicant’s mark is dependent on the
literal terms ‘GOT STRAPS’, and the addition of punctuation to
the display of the mark does not significantly alter the
commercial impression.” Applicant’s Brief, p. 8. In support of
its position, applicant relies on several Board decisions
holding that the presence of punctuation marks (for example, a
hyphen or exclamation point) does not significantly change the
meaning or significance of a mark. See, e.g., In re Brock
Residence Inns, Inc., 222 USPQ 920, 922 (TTAB 1984)(“The
presence of the exclamation point at the end of the designation
[FOR A DAY, FOR A WEEK, FOR A MONTH OR MORE!] does not alter our
opinion because it serves as well to emphasize the descriptive
and informational significance of the designation as to indicate
any other meaning.”); In re Vanilla Gorilla, L.P., 80 USPQ2d
1637, 1639 (TTAB 2006), citing In re Samuel Moore & Co., 195
USPQ 237, 240 (TTAB 1977) (“the addition of punctuation marks to
a descriptive term would not ordinarily change the term into a
non-descriptive one.”); In re S.D. Fabrics, Inc., 223 USPQ 54
(TTAB 1984)(presence of slash in mark does not alter its
descriptive connotation). These cases, however, were all
decided in the context of descriptiveness refusals. The issue
Serial No. 85047191
6
of whether a punctuation symbol affects the descriptiveness of a
mark has no bearing on whether the addition or deletion of a
punctuation symbol constitutes a material alteration to a mark.
More on point is the Board’s decision in Richards-Wilcox
Mfg. Co., 181 USPQ 735, 736 (Comm’r Pats. 1974), overruled on
other grounds, In re Umax Data System, Inc., 40 USPQ2d 1539
(Comm'r Pats. 1996) which, as in the case before us, involved
the issue of material alteration and punctuation marks. In that
case, the Assistant Commissioner found that the examining
attorney did not abuse his discretion in denying applicant’s
proposed amendment of the mark FYE[R-W]ALL to FYER-WALL as a
material alteration, in part, because the addition of the
brackets changed the commercial impression of the mark by no
longer emphasizing the initial letters of applicant’s name, “R”
and “W.”
We also find instructive the guidance provided in the
Trademark Manual of Examining Procedure (“TMEP”) Section
807.14(c) (8th ed. Oct. 2011) setting forth a list illustrating
instances where either the addition or deletion of punctuation
changes the commercial impression of a mark for purposes of
determining whether the amendment constitutes a material
alteration. This list specifically includes “the addition or
deletion of a question mark, which changes a statement into a
question or vice versa.”
Serial No. 85047191
7
We find that in this instance, applicant’s proposed
addition of a question mark to the mark “GOT STRAPS” constitutes
a material alteration because it changes the commercial
impression of the original mark from a declaratory statement to
an interrogative phrase. A question mark is defined as “the
punctuation mark (?) placed at the end of a sentence or phrase
intended as a direct question. It is also used after a word or
phrase whose appropriateness is in doubt, or after a number or
date whose accuracy is in doubt.” See online dictionary
definition from Encarta® World English Dictionary attached to
June 2, 2011 Final Office action. The placement of a question
mark at the end of the phrase GOT STRAPS transforms not only the
appearance and meaning of applicant’s original mark but also the
pronunciation. In other words, applicant’s proposed amendment
alters “the essence of the original mark.” The reasoning
offered by the examining attorney in his brief is particularly
compelling:
…GOT STRAPS in this context has the overall commercial
impression of a definitive statement that the speaker
is in possession of guitar straps. In short, the
overall commercial impression is “I have guitar
straps.” “Got” is “used for saying ‘have’ in informal
speech.” See online dictionary definition from
MacMillan Dictionary attached to December 7, 2011
request for reconsideration denial final Office action
at page 78. Nothing from the plain meaning of the
word “got” implicitly or explicitly states that a
question is created when this word is used.
Serial No. 85047191
8
However, GOT STRAPS? has the overall commercial
impression that the speaker is asking the listener
whether he or she has guitar straps. The overall
commercial impression is “do you have guitar straps?”…
If the mark on the drawing was DO YOU HAVE GUITAR
STRAPS, and the mark on the specimen was DO YOU HAVE
GUITAR STRAPS?, the addition of the question mark
would not constitute a material alteration. In this
hypothetical, the mark is undoubtedly a question.
Therefore, the mere addition of the question mark does
not change the overall commercial impression of the
mark. Put in another way, the addition of the
question mark simply “corrects” the punctuation of the
slogan….
In summary, GOT STRAPS? versus GOT STRAPS is the
equivalent to “do you have guitar straps” versus “I
have guitar straps.”
Applicant argues that due to the popularity of the “Got
Milk?” advertising campaign, consumers recognize ‘Got ____’
marks to be a parody of the ‘Got Milk?’ campaign and
automatically perceive the mark as a question, even if no
question mark is included. Applicant’s Brief, p. 11. In
support thereof, applicant introduced in the record an excerpt
from Wikipedia® and one online article describing the “Got
Milk?” advertising campaign and its success. While both
articles indicate that parodies of the “Got Milk?” advertising
campaign are popular, none of the articles discuss the issue of
whether consumers encountering “Got ____” slogans without a
question mark perceive the mark as a declaratory statement or as
Serial No. 85047191
9
a question. The evidence therefore fails to support applicant’s
argument.3
Applicant also contends that neither republication of the
mark nor a new search for conflicting marks would be required by
the proposed amendment, and therefore there is no material
alteration. Applicant relies on the fact that numerous third-
party applications and registrations comprised of the phrase
“GOT ____?” do not include a design code for the question mark
for searching the USPTO database. Based on the lack of the
design code to designate the question mark, applicant maintains
that “the U.S. Patent and Trademark Office does not believe that
the question mark is a significant feature of the mark, and that
it is not necessary to include the question mark in a search for
the mark.” Applicant’s Brief, p. 7.
Applicant’s reliance on the Office’s design coding practice
is misplaced. As noted above, applicant applied to register its
mark in standard character format. According to Guideline 1 of
the U.S. Design Search Code Manual (available at www.uspto.gov),
“TRADEMARKS COMPOSED MERELY OF STANDARD CHARACTERS, TYPE PRINT,
BLOCK OR STYLIZED LETTERING ARE NOT CODED BECAUSE THEY DO NOT

3 We make no comment as to whether registration of applicant’s mark
would be precluded by Section 43(c) of the Trademark Act, 15 U.S.C. §
1125(c) which involves dilution. Although dilution is a ground that
the Board may consider in the context of an inter partes proceeding,
the Trademark Amendments Act of 1999, Pub. L. 106-43, 113 Stat. 218,
amended Section 2 of the Trademark Act to make clear that it is not a
Serial No. 85047191
10
CONTAIN DESIGN ELEMENTS.” Thus, question marks in marks in
standard character form are not treated as design marks, and
that is the reason the Office does not assign a design code to
them. In any event, whether or not a term has been assigned a
design code is purely an administrative practice and has no
bearing on our determination of the issue of material
alteration.
While we do agree with applicant that a new search for
conflicting marks would not be required, nonetheless, whether a
new search is or is not required is not the controlling factor
in our analysis – it is merely one factor for our consideration.
See discussion in footnote 2, supra. More important is the
question of whether republication of the mark would be required
if the mark had already been published, and, given the change in
the commercial impression of the mark, republication would be
necessary in order to give interested third parties adequate
notice. When the material alteration standard of Trademark Rule
2.72 was amended effective October 30, 1999, the Notice of Final
Rulemaking, published at 64 Fed. Reg. 48900 provided the
following reasoning for the amendment:
Because the granting of a filing date to an
application potentially establishes a date of
constructive use of the mark under Section 7(c) of the
Act, timely and accurate public notification of the

ground for ex parte refusal by examining attorneys during the
examination phase.
Serial No. 85047191
11
filing of applications is important. Accepting an
amendment that materially alters the mark on the
original drawing is unfair to third parties who search
Office records between the application filing date and
the date of the amendment, because they do not have
accurate information about earlier-filed applications.
Relying on the search of Office records, a third party
may innocently begin using a mark that conflicts with
the amended mark, but not with the original mark.
Also, an examining attorney may approve a later-filed
application for registration of a mark that conflicts
with the amended mark, but not with the original
mark….

In view of the foregoing, we find applicant’s proposed amendment
to add a question mark at the end of the phrase GOT STRAPS is a
material alteration within the meaning of Trademark Rule 2.72.
Applicant asserts that in the event the Board determines
that an amendment to the drawing is impermissible, in the
alternative it is entitled to register the mark GOT STRAPS
without the question mark symbol using the current specimens of
record. This brings us to the issue of whether the mark in the
drawing GOT STRAPS is a substantially exact representation of
the mark as used on the specimens. The specimens for
International Classes 16 and 35 submitted with applicant’s
statement of use display the mark as follows:
Serial No. 85047191
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Serial No. 85047191
13

Serial No. 85047191
14
The examining attorney argues that the mark as it appears
on the drawing is not a substantially exact representation of
the mark as used on the specimens because the addition of the
question mark to the specimen alters the overall commercial
impression of the mark. The examining attorney therefore
maintains that substitute specimens are required. Applicant,
relying on the case of In re Raychem Corp., 12 USPQ2d 1399 (TTAB
1989), and excerpts from the TMEP, argues that the phrase GOT
STRAPS is created by the literal elements of the words, as
opposed to the punctuation shown in the specimen, and thereby
the wording GOT STRAPS creates a separate and distinct
commercial impression from the question mark shown next to these
words in the specimen.
The “drawing depicts the mark sought to be registered.”
Trademark Rule 2.52, 37 CFR § 2.52. “In an application under
section 1(b) of the Act, the drawing of the mark must be a
substantially exact representation of the mark as intended to be
used on or in connection with the goods and/or services
specified in the application, and once an amendment to allege
use under § 2.76 or a statement of use under § 2.88 has been
filed, the drawing of the mark must be a substantially exact
representation of the mark as used on or in connection with the
goods and/or services.” Trademark Rule 2.51(b), 37 CFR §
2.51(b). “An applicant may seek to register any portion of a
Serial No. 85047191
15
composite mark if that portion presents a separate and distinct
commercial impression.” In re Lorillard Licensing Co., 99
USPQ2d 1312 (TTAB 2011), citing In re 1175854 Ontario Ltd., 81
USPQ2d 1446 (TTAB 2006). In other words, “the mark as actually
used must not be so entwined (physically or conceptually) with
other material that it is not separable from it in the mind of
the consumer.” In re Yale Sportswear Corp., 88 USPQ2d 1121
(TTAB 2008), quoting In re Chem. Dynamics Inc., 839 F.2d 1569, 5
USPQ2d 1828, 1830 (Fed. Cir. 1988).
The TMEP provides the following guidance in assessing
differences in punctuation between the mark on the drawing and
the mark on the specimens:
807.12(a)(i) Role of Punctuation in Determining
Whether Mark on Drawing Agrees with Mark on Specimen
In assessing discrepancies in punctuation between the
mark on the drawing and the mark shown on the
specimen, the general rule is that:

(1) Extraneous, non-distinctive punctuation that
appears on the specimen may be omitted from the
mark on the drawing, because an acceptable specimen
may contain additional matter used with the mark on
the drawing, so long as the mark on the drawing
makes a separate and distinct commercial impression
apart from the other matter. See TMEP §807.12(d)
and cases cited therein regarding “mutilation” of
the mark.
(2) Punctuation in the mark on the drawing must also
appear on the specimen because a mark sought to be
registered under § 1 must be “used in commerce,”
and if the punctuation on the drawing does not
appear on the specimen, the mark on the drawing is
not used in commerce.
Serial No. 85047191
16
807.12(a)(iii) Punctuation on the Specimen but Not on
the Drawing
Generally, extraneous, non-distinctive punctuation
marks that appear on the specimen may be omitted from
the drawing, if the matter on the drawing makes an
impression separate and apart from the punctuation
marks that appear on the specimen. See TMEP
§ 807.12(d). For example, if the mark on the drawing
is HOME RUN, and the mark on the specimen is “HOME
RUN,” the drawing is considered a substantially exact
representation of the mark as used on the specimen.
The quotation marks on the specimen are nondistinctive
and do not change the commercial impression of the
mark, so it is unnecessary to amend the drawing or
require a substitute specimen.
However, in rare instances, the punctuation marks on
the specimen result in a mark with a different
commercial impression than the mark shown on the
drawing. For example, if the mark on the specimen is
PREGNANT?, and the mark on the drawing is PREGNANT,
the mark on the drawing is not a substantially exact
representation of the mark as actually used. The
question mark on the specimen transforms the word
PREGNANT from a mere statement to a question, and,
therefore, changes the commercial impression of the
mark. Moreover, the drawing cannot be amended to add
the punctuation because it would result in a material
alteration. Therefore, the applicant must submit a
new specimen showing the mark without the punctuation.
See TMEP §§ 807.14 et seq.

Although we are not bound by hypotheticals discussed in the
TMEP, in this particular case, we do find the hypothetical
involving the question mark persuasive.
In addition, the facts presented in In re Raychem, supra,
are distinguishable from the facts presented here. In that
case, the Board reversed the examining attorney’s refusal to
register the mark “TINEL-LOCK” on the grounds that the mark as
Serial No. 85047191
17
shown on the drawing did not agree with the display of the mark
on the specimens as “TRO6A1-TINEL-LOCK-RING.” The evidence in
the record showed that the alpha-numeric designation “TRO6A1”
was a stock number, and that the term “RING” was a generic
designation for the goods. As the Board explained:
In the case at hand the alpha-numeric designation
appearing on the specimen in front of “TINEL-LOCK” is
not essential to the commercial impression of “TINEL-
LOCK” as a trademark for applicant's metal rings. In
a similar sense, the generic term “RING,” although
connected to the model number and the source-
identifying term, “TINEL-LOCK,” by a hyphen,
nonetheless plays no integral role in forming the
portion of applicant's mark which distinguishes
applicant's goods from those of others. Applicant
therefore need not include either the part number or
the generic term in the drawing, because neither is
essential to the commercial impression created by the
mark as shown in the specimens. Prospective
purchasers of these highly technical goods would
readily recognize both the part number and the name of
the goods as such, and would therefore look only to
the trademark “TINEL-LOCK” for source identification.
The fact that hyphens connect both the part number and
the generic term to the mark does not, under the
circumstances presented by this case, create a unitary
expression such that “TINEL-LOCK” has no significance
by itself as a trademark. Such independent
significance is in fact supported by applicant's use
of the mark without the part number or generic
designation in its advertising materials.

In re Raychem, 12 USPQ2d at 1400. In the case before us, the
specimens do not display the mark as used with a model or stock
number or a generic indicator. Instead, we find the Board’s
determination in the case of In re Yale Sportswear Corp., 88
USPQ2d 1121 (TTAB 2008), as presenting a more apt analogy.
Serial No. 85047191
18
There, the Board affirmed the examining attorney’s refusal to
register the mark “UPPER 90” on the grounds that applicant's
drawing was not a substantially exact representation of the mark
as used, where the mark depicted on the specimens appeared as
“UPPER 90°” with the addition of a degree symbol. As the Board
reasoned:
Although the degree symbol in applicant's mark is not
physically large, we find that it nonetheless
substantially changes the overall impression of the
mark. Without the degree symbol, it is unclear what
the “90” in the drawing might refer to. However, when
viewed on applicant's specimens of use, the degree
symbol in the mark would clearly be perceived as
modifying the preceding number, making clear that its
meaning is “ninety degrees,” indicating that it refers
to either an angle or a temperature. As such, the
mark might possibly suggest to the potential purchaser
that applicant's sports clothing is made for playing
in especially hot weather, or indeed that the mark
refers to an angle, as applicant contends.

Thus, the mark in the specimen has a different
connotation, would be pronounced differently (“upper
ninety” vs. “upper ninety degrees,”) and looks
slightly different than the mark sought to be
registered. The degree symbol in this case clearly
adds to the meaning of the mark in the application.
Our conclusion is therefore that UPPER 90 does not
form a “separate and distinct” commercial impression.
It cannot be severed from the degree symbol without
altering the meaning, pronunciation, and, to some
extent, the appearance of the mark.

Id. at 1123-4.
Similarly here the addition of the question mark not only
“adds to the meaning” of the phrase “GOT STRAPS” but indeed
transforms the significance of the phrase from a declaratory
Serial No. 85047191
19
statement to a direct question. See discussion supra. The
literal element of “GOT STRAPS” cannot be “severed” from the
question mark without altering the commercial impression or
meaning of the mark. Prospective consumers will not only
perceive the mark differently but will also pronounce the mark
differently as well. Such an alteration changes the commercial
impression of the mark. As such, the question mark at the end
of the phrase “GOT STRAPS” is “entwined” as an integral part of
the mark as used in commerce. We therefore find that
applicant's drawing of the mark is not a substantially exact
representation of the mark as used in commerce. See Trademark
Rule 2.51(b).
DECISION: Both refusals to register are affirmed.