`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`Mailed: September 19, 2014
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`Opposition No. 91211574
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`Duke University
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`v.
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`New Directions for Young Adults, Inc.
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`nmt
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`By the Trademark Trial and Appeal Board:
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`On August 12, 2014, applicant filed a proposed amendment to its
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`application Serial No. 85805505, with opposer's consent.
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`Applicant’s amendment seeks to amend its mark by changing the drawing
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`to add the words “DIRECTION THERAPY” always in close proximity to the
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`mark.
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`Applicant’s amendment failed to include a substitute drawing. See
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`Trademark Rules 2.52 and 2.54, 37 C.F.R. §§ 2.52 and 2.54 and Trademark
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`Manual of Examining Procedure (TMEP) §807.15. Such an amendment may
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`only be accepted if it does not comprise a material alteration of the mark.
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`The modified mark must contain what is the essence of the original
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`mark, and the new form must create the impression of being essentially the
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`same mark. The general test of whether an alteration is material is whether
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`the mark would have to be republished after the alteration in order to fairly
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`Opposition No. 91211574
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`present the mark for purposes of opposition. If one mark is sufficiently
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`different from another mark as to require republication, it would be
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`tantamount to a new mark appropriate for a new application. In re Hacot-
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`Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997),
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`quoting Visa International Service Association v. Life-Code Systems, Inc., 220
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`USPQ 740,743-44 (TTAB 1983).
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`Here, the addition of the words “DIRECTION THERAPY” to
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`applicant’s mark creates a different commercial impression, and this is an
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`impermissible material alteration of the mark. See In re Who? Vision
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`Systems, Inc., 57 USPQ2d 1211 (TTAB 2000) (proposed amendment from
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`“TACILESENSE” to “TACTILESENSE” found to be material alteration).
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`Accordingly, applicant’s proposed amendment to its mark is denied.
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`Applicant is allowed thirty days from the mailing date of this order to
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`provide a renewed amendment which complies with the above criteria, failing
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`which proceedings will resume and trial dates will be reset.
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`Proceedings are otherwise suspended.
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`2
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