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The use of a question mark in “Got Straps?” creates a different commercial impression compared to “Got Straps” without a question mark and thus would constitute a material alteration of a trademark as originally applied for, the Trademark Trial and Appeal Board ruled Aug. 9 (In re Guitar Straps Online LLC, T.T.A.B., No. 85047191, 8/9/12).
Affirming a refusal to register, the board rejected the argument that the addition of a question mark was not a material alteration because it would not require a new trademark search to be conducted.
Guitar Straps Online LLC of Arvada, Colo., sells straps and accessories for guitars and other musical instruments. In 2010 Guitar Straps filed an application with the Patent and Trademark Office to register “Got Straps” as a trademark for bumper stickers (featuring the slogans “Got Straps?” and “Strap One On!”) and for “online retail store services featuring straps for musical instruments and accessories for musical instruments.”
After publication and an issuance of an allowance, Guitar Straps submitted a statement of use and proposed to amend the mark by adding a question mark--“Got Straps?” The PTO refused to register the mark on the grounds that this constitute a material alteration and the drawing submitted with the application did not constituted a “substantially exact representation” of the mark as shown in the specimens.
Guitar Straps appealed.
Administrative Trademark Judge Angela Lykos first noted that under Trademark Rule 2.72(b)(2), such an amendment may be made only if the “proposed amendment does not materially alter the mark.”
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 Pierce Foods Corp., 230 USPQ 307 (T.T.A.B. 1986), further said that an alteration that would result in the conducting of another search was a material alteration.
In a footnote, the board drew a “subtle distinction” between a change that required republication and a change that required a new search. Specifically, the question of whether a new search would be required was merely a factor in determining whether a material alteration has been made.
Quoting from In re Who? Vision Systems Inc., 57 USPQ2d 1211 (T.T.A.B. 2000), the board said that the broader test was “whether the proposed amendment contains 'the essence of the original mark' and whether it creates 'the impression of being essentially the same mark.' ”
Applying this standard, the board first rejected as inapplicable precedent that addressed the question of how changing punctuation weighed on whether a term was descriptive and thus constituted a trademark at all.
However, Richards-Wilcox Manufacturing Co., 181 USPQ 735 (Comm'r Pats. 1974), involved a party that had initially applied to register the term “Fye[R-W]all” but wanted to amend it to be “Fyer-Wall.” In that case, material alteration was found, the court said, “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.' ”
Furthermore, the court noted that Section 807.14(c) of the Trademark Manual of Examining Procedure said that “the additional or deletion of a question mark, which changes a statement into a question or vice versa” was a situation in which material alteration had occurred.
Taking this into consideration, the board said that the addition of a question mark in this case did indeed change the commercial impression in this manner and thus constituted a material alteration. The board said:
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 board rejected as irrelevant evidence of the popularity of the dairy industry's “Got Milk?” campaign, because regardless of whether “Got Straps?” would be perceived as a parody of “Got Milk?,” this did not address the question of whether “Got Straps?” created a different commercial impression than “Got Straps” did.
And this question of the commercial impression would remain, the board said, regardless of whether this change would make a new search necessary.
Thus, the board found this change to constitute a material alteration barred under Rule 2.72.
The board then moved on to the question of whether Guitar Straps could then still seek registration of its originally applied for mark, “Got Straps” without punctuation. The board determined that the submitted specimens--the bumper stickers featuring “Got Straps?” with the question mark--did not constitute a “substantially exact representation” of the putative “Got Straps” trademark under Trademark Rule 2.51(b).
The board thus affirmed the refusals.
The board's opinion was joined by Administrative Trademark Judges Charles M. Grendel and Lorelei Ritchie.
Guitar Straps was represented by Sabrina C. Stavish of Sheridan Ross, Denver. The PTO was represented by Simon Teng, trademark examining attorney.
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