In re Greenwood, 2020 TTAB LEXIS 499; 2020 U.S.P.Q.2D (BNA) 11439

In re Greenwood, 2020 TTAB LEXIS 499; 2020 U.S.P.Q.2D (BNA) 11439

Opinion

This Opinion is a Precedent of the TTAB

Opinion by Heasley, Administrative Trademark Judge:

Applicant, Lee Greenwood, seeks registration on the Principal Register of the proposed mark GOD BLESS THE USA (in standard characters) for "accent pillows; decorative centerpieces of wood," in International Class 20 and "decorative wall hangings, not of textile" in International Class 27. ¹ 

The Trademark Examining [*2]  Attorney has refused registration of Applicant's proposed mark under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127, on the ground that it fails to function as a trademark. When the refusal was made final, Applicant appealed and filed a brief seeking reversal of the refusal to register. ² 

The day after the Examining Attorney filed her brief, ³ Applicant belatedly filed a request to remand the application in order to amend the proposed mark to THE LEE GREENWOOD COLLECTION GOD BLESS THE USA. ⁴ "As a best practice, an applicant seeking to obviate a refusal by proposing an amendment to an application should propose the amendment as early as possible during prosecution." In re Ox Paperboard, LLC, 2020 U.S.P.Q.2d (BNA) 10878, 2020 TTAB LEXIS 266 at *4 (TTAB 2020). Nevertheless, the Board suspended the appeal and remanded the application to the Examining Attorney for consideration of the proposed amendment. ⁵ See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1205.01 (2020) ("A request for remand to consider an amendment will be granted upon a showing of good cause. ... If the request for remand is granted, the Board will suspend proceedings with respect to the appeal and remand the application to the examining attorney for consideration of [*3]  the amendment.").

On remand, the Examining Attorney refused to accept the proposed amendment on the ground that it would materially alter the applied-for mark. ⁶ Applicant protested that he was merely adding his previously registered mark, THE LEE GREENWOOD COLLECTION ⁷ for the same goods, to his proposed mark, GOD BLESS THE USA, thereby enabling it to function as a trademark. ⁸ The Examining Attorney nonetheless maintained and made final her determination that the proposed amendment would materially alter the original applied-for mark. She accordingly refused the proposed amendment, and advised Applicant that the previous drawing, GOD BLESS THE USA, would remain the operative drawing for the applied-for mark. ⁹ See TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 807.17 (Oct. 2018) ("If an applicant submits an amendment to the drawing and the examining attorney determines that the amendment is unacceptable, the examining attorney must issue an Office action refusing to accept the amendment and advising the applicant that the amendment will not be entered, and that the previous drawing remains the operative drawing.").

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