Reese Brothers, Inc.

Trademark Trial and Appeal Board

Mar 9, 1999

No. 74668052 (T.T.A.B. Mar. 9, 1999)

Paper No. 13
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 9, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Reese Brothers, Inc.
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Serial No. 74/668,052
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Russell D. Orkin of Webb Ziesenheim Bruening Logsdon Orkin
& Hanson, P.C. for Reese Brothers, Inc.
Kelley L. Wells, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney)
_______
Before Seeherman, Hanak and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Reese Brothers, Inc. filed an application to register
the mark shown below
for “fundraising for charitable purposes”.1

1 Application Serial No. 74/668,052, filed May 1, 1995, alleging
a bona fide intention to use the mark in commerce. Applicant
disclaimed the word “club”.
Ser. No. 74/668052
2
Registration has been finally refused pursuant to
Trademark Rules 2.51 and 2.72(a) on the ground that the
specimens submitted with applicant’s statement of use do
not show use of the applied-for mark. Applicant attempted
to avoid this refusal by amending the drawing, but the
Examining Attorney has refused to accept applicant’s
proposed amendment to conform the drawing to the display on
the specimens of record, on the basis that such an
amendment constitutes a material alteration of the mark
under Trademark Rule 2.72(a).
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm.
Although the technical basis for the refusal is that
the specimens do not support the applied-for mark in the
drawing, in fact, the issue before us is whether
applicant’s proposed amendment to change the drawing to the
mark shown below2
constitutes a material alteration of the mark and is not
permissible under Trademark Rule 2.72(a).3

2 We note that the words, THE RED KETTLE CLUB, appear in two
different styles of lettering on the specimens, neither of which
is the style as set forth in the amended drawing.
3 For ease of discussion, we will refer to the involved marks
simply in typed form.
Ser. No. 74/668052
3
Applicant contends that amendments to conform the
drawing to the actual use shown on the specimens is
permitted pursuant to the case of In re ECCS, 94 F.3d 1582,
9 USPQ2d 2001 (Fed. Cir. 1996); and that inasmuch as
applicant’s application is internally inconsistent,
applicant merely seeks to remove the ambiguity. In its
reply brief, applicant argues that the proposed amendment
is not a material alteration of the character of the mark
because the word KETTLE is the dominant portion of both
marks; that the addition of the words “the” and “red”
merely adds a color to the overall impression, which
remains “an image of a club for kettle users”; and that the
proposed amendment to the drawing would require neither a
new search by the Examining Attorney, nor re-publication of
the mark.
In the ECCS case, supra, the Court identified two
distinct categories of proposed amendments to drawings.
The first category involved a situation like that then
before the Court, where the use-based application contained
an internal ambiguity or inconsistency between the mark
shown in the drawing and the mark shown on the specimens.
The Court found that removing the ambiguity by correcting
the drawing was authorized under Trademark Rules 2.51(a)(1)
and 2.72(b). The second category of proposed amendments to
Ser. No. 74/668052
4
drawings are those which involved proposed changes to a
mark as originally filed when there is no ambiguity or
inconsistency between the specimens and the drawing. In
these cases the proper inquiry is whether the proposed
amendment materially alters the character of the mark under
Trademark Rule 2.72(a).
In the case now before us, applicant filed its
application based on intent to use [Section 1(b) of the
Trademark Act]. Because no specimens accompanied the
application, there was no ambiguity or internal
inconsistency in the original application, and therefore
this situation falls into the second category of amendments
to drawings as set forth in the ECCS case, supra.
Trademark Rule 2.72(a) reads as follows:
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.
In the case of In re Vienna Sausage Manufacturing Co.,
16 USPQ2d 2044, 2046 (TTAB 1990) the Board set forth the
following general test for determining whether the change
is a material alteration:
Ser. No. 74/668052
5
The old and new forms of the mark must
create the same general commercial
impression or create the impression of being
essentially the same mark.
See also, In re Finlay Fine Jewelry Corp., 41 USPQ2d
1152 (TTAB 1996); In re Nationwide Industries Inc., 6
USPQ2d 1882 (TTAB 1988); and Visa International Service
Assn. v. Life-Code Systems, 220 USPQ 740 (TTAB 1983).
We agree with applicant that the addition of the word
“THE” is insignificant. However, we do not agree that the
addition of the word “RED” is “only” the addition of a
color which does not change the overall impression of the
mark. The addition of the word “RED” in fact changes the
commercial impression of the mark. For example, a party
with rights in the mark RED CUP might have chosen not to
oppose the mark KETTLE CLUB, but might oppose the mark THE
RED KETTLE CLUB. Thus, the proposed amended mark THE RED
KETTLE CLUB would require a different search by the
Examining Attorney, and would require re-publication to
afford fairness to potential opposers.
In view of our conclusion that the commercial
impression of the original mark, KETTLE CLUB, is changed by
the proposed amendment of the mark to THE RED KETTLE CLUB,
we hold that the proposed amended mark is a material
alteration of the original mark, and that the Examining
Ser. No. 74/668052
6
Attorney was correct in refusing to accept the new drawing.
We further find that the specimens do not show use of the
mark depicted in the drawing.
Decision: The refusal to register on the ground that
the specimens do not evidence use of the applied-for mark
is affirmed.
E. J. Seeherman
E. W. Hanak
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board