Jen USA, Inc.

Trademark Trial and Appeal Board

Oct 7, 2008

No. 76652688 (T.T.A.B. Oct. 7, 2008)

Mailed: October 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jen USA, Inc.
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Application Serial No. 76652688
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Myron Amer of Myron Amer, PC, for Jen USA, Inc.

Ingrid Eulin, Examining Attorney, Law Office 111, Craig D.
Taylor, Managing Attorney.
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Before Hohein, Bucher, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Jen USA, Inc. filed an application for registration of
the mark shown below

in International Class 3 for goods ultimately identified as
follows:1
Color cosmetics, namely, lipsticks, lipstick
liners, lip gloss, eyeliners, eye shadows,

1 Filed December 30, 2005, alleging a bona fide intent to use the
mark in commerce under Trademark Act § 1(b); 15 U.S.C. § 1051(b).
Applicant has disclaimed the exclusive right to use
“aromatherapy” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Application No. 76652688
2
blushers, face powders, foundation, mascaras, nail
polishes, eyebrow pencils; skin treatment
products, namely, cleansers, toners, moisturizers,
eye creams, hand and body lotions, body and shower
gels, and facial soap, nail care preparations, and
nail polish removers; fragrance products, namely,
cologne, perfume, toilet water, scented soaps,
body powders, bath oils; sun screen preparations;
hair care products, namely, hair coloring, hair
bleaches, hair lighteners, highlighting
preparations; shampoos; conditioners, hair color
stain removers, hair gels, mousses, hair sprays
and styling lotions; and hair care preparations,
namely, hair body and root lift gels; bath sets
comprised of bath gels, bath foams and bath oils.

On March 2, 2007, following publication for opposition
and issuance of a notice of allowance, applicant filed a
statement of use pursuant to Trademark Rule 2.88. Upon
examination of the statement of use, the examining attorney
found that the drawing was not a substantially exact
representation of the mark as used. Trademark Rule 2.51(a).
Applicant did not argue the substance of the examining
attorney’s refusal, but instead submitted the following
proposed amended drawing to bring it into conformity with
the specimens of use:

The examining attorney issued and ultimately made final
a requirement for substitute specimens, and a refusal to
accept applicant’s proposed amendment to the drawing,
pursuant to Trademark Rule 2.72(b)(2).
Application No. 76652688
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Applicant and the examining attorney have filed briefs.
We affirm.
I. Issue on Appeal
Continuing its position during examination, applicant
does not argue that its original drawing is a substantially
exact representation of the mark as used, but rather
contends that the examining attorney erred in refusing to
accept the proposed amended drawing. By failing to address
the agreement of the specimens with the original drawing,
applicant has waived that issue. We accordingly do not
address whether the examining attorney’s rejection of the
specimens of record was correct, but rather confine our
analysis to the question of whether applicant’s amended
drawing was properly rejected.
II. Applicable Law
Pursuant to the Trademark Rules:
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 a statement of use, or
substitute specimens 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.

Trademark Rule 2.72(b).
Application No. 76652688
4
For an amended drawing to be acceptable,
[t]he 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 Int’l Serv. Ass’n v. Life-Code Syst., Inc., 220 USPQ
740, 743-44 (TTAB 1983); cited in In re Hacot-Colombier, 105
F.3d 616, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997) (material
alteration in applications filed under Trademark Act § 44).
“As a general rule, the addition of any element that would
require a further search will constitute a material
alteration.” TMEP § 807.14 (5th ed. 2007) (citing In re
Pierce Foods Corp., 230 USPQ 307 (TTAB 1986)). Moreover, it
is well-settled that a material alteration can result from
deletions, as well as additions to a mark. In re Dillard
Dep’t Stores Inc., 33 USPQ2d 1052 (Comm'r Pat. 1993). Non-
distinctive matter may be deleted from a mark, but only “if
the overall commercial impression is not altered.” TMEP
§ 807.14(a).
III. Discussion
Applicant argues that it inadvertently2 erred in
submitting the original drawing in its application, but that

2 Whether applicant’s error was inadvertent or not is irrelevant.
Application No. 76652688
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the examining attorney also erred in “conclud[ing] that
applicant’s correction of the error is a material change in
applicant’s trademark.” App. Br. at 2. As noted in its
reply brief
the sole difference is the absence of the bamboo
illustration in the right version, or stated
otherwise, the display solely of the word portion
in the right version. It should be readily
apparent that the word portion is the more
dominant because, as known from common experience,
it is used in calling for the trademark-identified
product by phone or at a point-of-sale retail
store display.

App. Rep. Br. at 1.
Applicant is correct that the literal portion of a mark
is often considered dominant for likelihood of confusion
purposes. But the issue before us is material alteration,
not likelihood of confusion, and the applicable rule does
not permit deletion of material from a mark simply because
it creates a weaker impression than what would remain.
Here, applicant seeks to amend the mark to delete the
depiction of several stalks of bamboo which appear to the
left of the stylized wording GREAT MOODS AROMATHERAPY.
While the bamboo design is not physically integrated with
the wording in the mark, we cannot say that it lacks
distinctiveness. There is no argument that the bamboo

The applicant’s intent is not a factor in considering whether an
amendment would materially alter the mark in the drawing. We
likewise find no relevance in applicant’s Registration No.
3489183, for the same (original) drawing and different goods.
Application No. 76652688
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design is generic or descriptive of the goods or would
otherwise be seen as having no source-identifying function.
We further note that the bamboo design in the original
drawing was coded by the USPTO, and was in fact included in
the examining attorney’s search of the applied-for mark. It
is thus clear that her search and analysis in this
application would have been different if the original
drawing had not included the bamboo design. As noted by the
examining attorney, the amendment proposed by applicant
would essentially broaden the scope of the application
because it removes a distinctive element from the mark.
Applicant’s amendment would thus require a new search to
determine if there is a conflict with any registration or
prior-filed application without considering the distinctive
bamboo design. For the same reason, republication would be
necessary, as deletion of this distinctive element may
affect the decision of any third party to oppose.
Conclusion
After careful consideration, we find that applicant’s
proposed amended drawing is unacceptable because it would
constitute a material alteration of the mark as originally
filed. Trademark Rule 2.72(b). As noted, applicant does
not dispute that its original drawing is not a substantially
exact representation of the mark as used in commerce.
Application No. 76652688
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Decision: The refusal to register under Trademark Rule
2.51(b) is accordingly affirmed.