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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
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`August 25, 2022
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`Opposition No. 91266242
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`Apple Inc.
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`v.
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`School Zone Publishing Company
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`Kevin G. Crennan, Interlocutory Attorney:
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`On August 23, 2022, Applicant filed a proposed amendment to its application
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`Serial No. 88530797, with Opposer’s consent, and Opposer’s withdrawal without
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`prejudice of the opposition contingent upon entry of the amendment.1 45 TTABVUE.
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`By the proposed amendment, Applicant seeks to amend the mark as follows:
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`From:
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`To:
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`1 The Board notes that the submission does not include proof of service, as Trademark Rule
`2.119 requires. Even though both parties signed the submission, every submission filed with
`the Board must be served on the other party. Notwithstanding, the Board exercises its
`discretion to consider the submission. However, strict compliance is required in all future
`submissions filed with the Board, and the Board may decline to consider any submission that
`does not comply. The submission may be viewed using TTABVUE at http://ttabvue.uspto.gov.
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`Opposition No. 91266242
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`A proposed amendment to any application which is the subject of an inter partes
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`proceeding is governed by Trademark Rule 2.133, and must also comply with all
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`applicable rules and statutory provisions, including Trademark Rules 2.71-2.75. See
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`TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE §§ 514.01, 605.03(b)
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`(2022). An applicant may amend the drawing of the mark only if the proposed
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`amendment does not materially alter the mark. See Trademark Rules 2.72(a)(2),
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`(b)(2). The Office will determine whether a proposed amendment material ly alters a
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`mark by comparing the proposed amendment with the drawing of the mark filed with
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`the original application. Id. The controlling question is always whether the old and
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`new forms of the mark create essentially the same commercial impression. See Jack
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`Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
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`S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1132 n.1 (Fed. Cir. 2015). Further, in an
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`application under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), the applicant only
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`may amend the mark or description thereof if the specimen in the application
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`supports the proposed amendment. See Trademark Rule 2.72(a)(1).
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`The proposed amendment is unacceptable as it materially alters the mark because
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`Applicant seeks to remove the curvature of the purple arc and replace the leaf with
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`an abstract geometric shape. Therefore, the design no longer resembles a piece of
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`fruit.
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`In addition, the proposed amendment does not include an amended mark
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`description, as Trademark Rules 2.37 and 2.52(b)(5) require, such that the current
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`2
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`Opposition No. 91266242
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`description does not accurately describe the amended mark. See TRADEMARK MANUAL
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`OF EXAMINING PROCEDURE (TMEP) § 808 (2022).
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`With respect to the proposed amended drawing, it is unacceptable as the digitized
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`image thereof is blurry, in contravention of Trademark Rule 2.52, which requires “a
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`clear drawing of the mark.” See also Trademark Rule 2.53(c); TMEP §§ 807.04(a),
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`807.05(c). Nor has Applicant provided a separate drawing page depicting the
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`proposed amended mark. See TMEP § 807.15.
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`Lastly, the proposed amended mark is not “a substantially exact representation
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`of the mark as used on or in connection with the … services” as depicted on the
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`specimen in the application. Trademark Rule 2.51(a); TMEP § 807.12(a). At a
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`minimum, the mark in the specimen includes a leaf design, which is omitted from,
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`and replaced by an abstract geometric shape, in the proposed amendment.
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`In view of these findings, the Board cannot accept or enter the proposed
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`amendment, and, thus, the motion to amend is denied without prejudice. The
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`present drawing, that is, the drawing prior to the filing of the motion to amend,
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`remains operative for purposes of future amendment.
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`Inasmuch as the filing of the proposed amendment indicates to the Board that the
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`parties are making efforts to settle this matter, proceedings are suspended, and the
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`parties are allowed until thirty (30) days from the date of this order to file a revised
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`motion to amend, failing which the Board will resume proceedings and reset dates,
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`and the opposition will go forward on the present application.
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`3
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