Space Adventures, Ltd.

Trademark Trial and Appeal Board

May 26, 2005

No. 76391912 (T.T.A.B. May. 26, 2005)

Mailed:
26 May 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Space Adventures, Ltd.
________

Serial No. 76391912
_______

Mark B. Harrison of Venable LLP for Space Adventures, Ltd.

Gene V.J. Maciol, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Quinn, Holtzman, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 5, 2002, Space Adventures, Ltd. (applicant)
applied to register the mark shown below on the Principal
Register for goods ultimately identified as:
Protective clothing, namely suits for use in space
travel, space flight simulation, and space flight
training; protective boots; training equipment,
namely, air tight respiratory masks, protective
helmets, breathing apparatuses for astronauts, namely,
rebreathers, video cameras, GPS devices consisting of
computers, computer operating software, transmitters,
receivers, and network interface devices,
communications devices, namely, headphones and
microphone sets comprised of microphones, microphone
cables, and microphone stands in Class 9;
Publications, namely, books, magazines in the field of
space travel, and posters in Class 16; and
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 76391912

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Clothing, namely, t-shirts, sweatshirts, pants, shorts
in Class 25.

The application (Serial No. 76391912) is based on
applicant’s bona fide intention to use the mark in
commerce. The application has been amended to seek
registration under the provision under Section 2(f) of the
Trademark Act. The application also claims ownership of
Registration No. 2,243,985.1 Applicant subsequently sought
to amend its mark and it submitted the drawing shown below:

The examining attorney refused registration on the
ground that “applicant has proposed an amendment that
materially alters the character of the mark” under 37 CFR
§ 2.72. Brief, first page. Specifically, the examining
attorney points out that the “proposed drawing deletes all
reference to the moon design that helped form the letter

1 This registration is on the Supplemental Register for the mark
SPACE ADVENTURES (typed) for “entertainment in the nature of high
altitude flights, not for transportation purposes” in Class 41.
Ser. No. 76391912

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‘A’ in the term SPACE” and which the examining attorney
describes as “a non-generic, distinctive element.” Brief
at 4.
The moon design reinforces the “out of this world”
commercial impression formed by the totality of the
original mark. In addition, the moon design assisted
in creating the predominant term, SPACE, and was
reinforced as the visual center of the mark. It
appeared in the center of the mark, in the predominant
term of the mark and was framed by the high arching
line of the letter “A,” just like a picture frame
highlights a picture.

Brief at 4.
Applicant obviously disagrees with this analysis.
Applicant argues that the “actual horizontal line in
Applicant’s original mark and amended mark forms the letter
‘A,’ not the moon” and that the moon “is in essence
background and is not a significant feature of the mark.”
Brief at 3-4.
We begin by noting that a “drawing depicts the mark
sought to be registered.” 37 CFR § 2.52. As in this case,
when an applicant proposes to amend the drawing in an
intent-to-use application, the proposed amended drawing
must “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.” 37 CFR § 2.72(b)(2).
Ser. No. 76391912

4
The “touchstone for permissible amendments to the mark
is that the mark retains the same overall commercial
impression.” In re CTB Inc., 52 USPQ2d 1471, 1473 (TTAB
1999), citing, Visa International Service Assn. v. Life-
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 mark must create the impression
of being essentially the same mark…”). In this case,
applicant’s original drawing “was unacceptable because it
contained shades of gray and the registration symbol.”
Examining Attorney’s Brief at 4 n.7. Applicant corrected
these informalities, and these issues are not involved with
this appeal. Id. However, in the course of correcting
these deficiencies, applicant deleted the moon in the
center of the mark and the question is now whether this
deletion has changed the commercial impression of the mark.
Deleting matter from a drawing can change the commercial
impression of the mark. In CTB, the applicant sought to
change a mark that consisted of a tornado design and the
word TURBO in script to a typed form drawing for the word
TURBO. The board found that the “tornado design is not a
background design.” CTB, 52 USPQ2d at 1473. More
importantly, the board held that “the deletion of matter
from a mark should be evaluated according to the same
Ser. No. 76391912

5
standard as a proposed addition to the mark.” Id. at 1476.
Therefore, deletions of matter must be judged under the
standard we would apply if applicant was adding matter to
the drawing.
Applicant points out that the applicant in In re
Larios, 35 USPQ2d 1214 (TTAB 1995) was permitted to change
its mark from GRAN VINO MALAGA LARIOS to VINO DE MALAGA
LARIOS. However, in that case, the commercial impression
of the mark was nearly identical.

In addition, the board noted the “high degree of
descriptiveness (and resultant lack of distinctiveness)
inherent in the phrases "GRAN VINO" and "VINO DE." Larios,
35 USPQ2d at 1218. Obviously, in the present case, the
drawings are much more distinct and we cannot say that the
moon design has a high degree of descriptiveness such as
the term “Gran” in the Larios case. Therefore, we do not
find that this case dictates a similar result here.
Ser. No. 76391912

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We find that the cases that are more on point to the
facts here include CTB in which the board held that
deleting the tornado design from the TURBO mark created a
different commercial impression. Other cases include In re
Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm’r 1974) where
the Commissioner held that it would be a material
alteration to substitute a drawing for the word FYER-WALL
when the original drawing was for the mark FYE[R-W]ALL and
a diamond design. Also, in In re Dillard Department Stores
Inc., 33 USPQ2d 1052 (Comm’r 1993), the registrant was not
permitted to substitute a simpler version of the mark
INVESTMENTS for one that displayed the mark as follows:
in•
vest•
ments
We cannot say that the presence of the moon in the
center of applicant’s mark is a simple, background design,
nor is it a generic, non-distinctive design element.
Instead, it is prominently located in the center of the
largest letter in applicant’s design that is in the center
of the mark. The moon design in the context of the words
“Space Adventures” is an eye-catching design that fills a
space that would otherwise be void and reinforces the
“Space Adventures” theme of the mark. Finally, we add that
the fact that applicant’s proposed drawing would not
Ser. No. 76391912

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necessitate a new search “is not controlling.” In re Who?
Vision Systems Inc., 57 USPQ2d 1211, 1217-18 (TTAB 2000).
When we compare the marks in the original and proposed
drawing, we hold that they do not create the same overall
commercial impression. The absence of the moon design in
the amended drawing changes the commercial impression and
therefore, the mark in the amended drawing would be a
material alteration of the mark in the original drawing.
Decision: The examining attorney’s refusal to
register because applicant’s mark in the amended drawing is
a material alteration is affirmed.