In Re: Light, 662 F. App'x 929

Prema Jyothi Light applied to register two complex word-and-list designs as trademarks for children’s products; each design combined stylized wording (e.g., “SHIMMERING BALLERINAS & DANCERS”) with long columns/lists of fictional character names (≈570–660 words total).
USPTO examining attorneys rejected the applications for (a) seeking multiple marks, (b) failing to function as trademarks (not source-identifying), and (c) proposed amendments that materially altered the marks; multiple abandons, revivals, and remands occurred over a decade of prosecution.
Light submitted specimens (playbook, leaflets) and claimed acquired distinctiveness under § 2(f); she also proposed amended drawings (rearranged names, added color/background elements).
The Trademark Trial and Appeal Board affirmed the examining attorney: the marks do not function as trademarks because the long lists appear informational (titles/lists of characters) and are not perceived as source indicators; specimens did not show trademark use; § 2(f) claim failed for lack of evidence of use as a mark.
The Board also held the proposed amendments would materially alter the marks (new commercial impression or requiring additional searches/republication).
The Federal Circuit affirmed, reviewing legal issues de novo and factual findings for substantial evidence, and declined to consider Light’s peripheral administrative complaints as irrelevant or untimely.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the applied-for matter functions as a trademark (source identifier)	Light: long stylized matter is recognizable and used where trademarks appear, so it identifies source; specimens show trademark use	PTO: the matter is informational (title/list of character names), too long/visually fragmented to function as a unitary mark	Held: Does not function as a trademark; substantial evidence supports Board’s factual findings
Whether the marks acquired distinctiveness under § 2(f)	Light: decades of use establish acquired distinctiveness	PTO: specimens show informational use, not promotion as a trademark; no evidence of use as a source indicator	Held: § 2(f) claim fails; insufficient evidence of trademark use
Whether proposed amendments materially alter the marks	Light: additions (color background, stars, rearranging names) are non-material and allowed under TMEP § 807.14(e)(ii)	PTO: amendments change commercial impression or would require additional search/republication	Held: Amendments materially alter marks; Board’s rejection affirmed
Procedural/administrative complaints (fee overpayment, document mishandling)	Light: alleged improper fee assessment and many USPTO handling errors	PTO/Board: these issues are untimely or irrelevant to the appealed refusals	Held: Court sees no error in Board declining to consider those issues

In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361 (Fed. Cir. 1999) (standard of review: Board’s legal conclusions reviewed de novo)
On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080 (Fed. Cir. 2000) (Board’s factual findings reviewed for substantial evidence)
In re Bush Bros. & Co., 884 F.2d 569 (Fed. Cir. 1989) (whether matter functions as a trademark is a factual question)
In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985) (trademark must enable consumers to distinguish source)
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (acquired distinctiveness standard)
In re Hacot-Colombier, 105 F.3d 616 (Fed. Cir. 1997) (material alteration test: whether republishing would be required)
In re Thrifty, Inc., 274 F.3d 1349 (Fed. Cir. 2001) (material alteration and amendment standards)