1215.08 Material Alteration
Amendments may not be made to the drawing of the mark if the character of the mark is materially altered. 37 C.F.R. §2.72. In determining whether an amendment is a material alteration, the controlling question is always whether the new and old forms of the mark create essentially the same commercial impression. See TMEP §§807.14–807.14(f) regarding further information about material alteration. In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) ( mark on the specimen (UPPER 90°) not a substantially exact representation of the mark on the drawing (UPPER 90); In re Innovative Cos., LLC, 88 USPQ2d 1095 (TTAB 2008) ( proposed amendment of the drawing from FREEDOMSTONE to FREEDOM STONE not material alteration of the mark); Paris Glove of Can., LTD, v. SBC/Sporto Corp., 84 USPQ2d 1856, 1862 (TTAB 2007) (in an application to renew a registration, the old and new specimens (AQUA STOP and AQUASTOP, both stylized) were deemed to be substantially the same because "mere changes in background or styling, or modernization, are not ordinarily considered to be material changes in the mark.").
1215.08(a) Adding or Deleting TLDs in Domain Name Marks
Generally, an applicant may add or delete a non-source-identifying TLD to/from the drawing of a domain name mark (e.g., COOPER amended to COPPER.COM, or COOPER.COM amended to COOPER) without materially altering the mark. Although a mark that includes a TLD will be perceived by the public as a domain name, while a mark without a TLD will not, if the TLD merely indicates the type of entity using the domain name, the essence of the mark is created by the second-level domain name, not the TLD. Thus, the commercial impression created by the second-level domain name usually remains the same whether the TLD is present or not. If the TLD does function as a source indicator, its deletion from the domain name mark may constitute a material alteration of the mark.
Example: Amending a mark from PETER to PETER.COM would not materially change the mark because the essence of both marks is still PETER, a person’s name.
Example: Amending a mark from ABC.PETER to ABC would materially change the mark because the essence of the original mark is created by both the second-level domain and the TLD.
Similarly, substituting one non-source-identifying TLD for another in a domain name mark, or adding or deleting a "dot" or "http://www." or "www." to a domain name mark is generally permitted.
Example: Amending a mark from ABC.ORG to ABC.COM would not materially change the mark because the essence of both marks is still ABC.
Example: Amending a mark from ABC.COM to ABC.PETER would materially change the mark because the essence of the original mark was ABC and the proposed mark now includes a source-identifying TLD.
1215.08(b) Adding or Deleting TLDs in Other Marks
If a mark that is not used as an Internet domain name includes a TLD, adding or deleting the TLD may be a material alteration.
Example: Deleting the term .COM from the mark ".COM ☼" used on sports magazines would materially change the mark.