NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: PREMA JYOTHI LIGHT,

Appellant

______________________ 

2014-1597

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

76/293,326.

------------------------------------------------------

IN RE: PREMA JYOTHI LIGHT,

Appellant

______________________ 

2014-1598

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

76/293,327.

______________________ 

Decided: October 7, 2016

______________________ 

PREMA JYOTHI LIGHT, Aurora, CO, pro se.
2 IN RE: LIGHT

THOMAS W. KRAUSE, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

appellee Michelle K. Lee. Also represented by CHRISTINA 

HIEBER, THOMAS L. CASAGRANDE, MARY BETH WALKER. 

______________________ 

Before LOURIE, DYK, and O’MALLEY, Circuit Judges.

LOURIE, Circuit Judge. 

Prema Jyothi Light (“Light”) appeals from two related 

U.S. Patent and Trademark Office (“USPTO”) Trademark 

Trial and Appeal Board (“Board”) decisions. In the first, 

Light appeals from the Board’s rejection of her application 

to register the matter shown below as a trademark. In re 

Light, No. 76293326, 2013 WL 6858009, at *6–8 (T.T.A.B. 

Dec. 13, 2013) (“Decision I”). 

In the second, Light appeals from the Board’s rejection of 

her application to register the matter shown below as a 

trademark. In re Light, No. 76293327, 2013 WL 6858010, 

at *5–7 (T.T.A.B. Dec. 13, 2012) (“Decision II”). 
IN RE: LIGHT 3

For the reasons that follow, we affirm both decisions. 

BACKGROUND

On July 9, 2001, Light filed two applications to register the above-pictured matter as trademarks for use on, 

inter alia, cartoon prints, paper dolls, and coloring books. 

Decision I at *2; Decision II at *1. The first proposed 

mark contains stylized wording in the top left-hand

corner, “SHIMMERING BALLERINAS & DANCERS 

CHARACTER COLLECTION,” surrounded by three

columns of terms “that appear to identify names of a 

variety of characters.” Decision I at *1. Examples of the 

character names include: “SHIMMERING WIND-HARP 

BUTTERFLIES JALINDA, JALISA, JAHA, JAJA, 

JELANI, & JUM” and “THE AIRY BALLERINA & 

DANCER CLARISSA.” Id. The entire proposed mark has 

approximately 660 words and identifies more than ninety

character names. See id. 

The second proposed mark similarly contains stylized 

wording in the top left-hand corner, “SHIMMERING 

RAINFOREST CHARACTER COLLECTION,” surrounded by columns of “an extremely long list of terms (in 
4 IN RE: LIGHT

smaller font) identifying names of fictional characters.” 

Decision II at *1. The character list includes: “JALINDA 

THE WIND HARP BUTTERFLY” and “HARRY & 

HARRIETA, THE HAIRY RAINFOREST SUSPENDER 

SPIDERS.” Id. The entire proposed mark has approximately 570 words and identifies more than 125 character 

names. See id. 

The examining attorney rejected Light’s applications, 

reasoning that each sought to register multiple marks. In 

response, Light filed proposed amendments to her marks. 

The examining attorney rejected the amendments, however, finding that the proposed changes effected material 

alterations of the subject matter. Light appealed to the 

Board, but because the appeals were not timely filed, the

applications were abandoned. 

Light later successfully petitioned to revive her applications, and the Board reinstituted the original appeals. 

In 2008, the Board remanded the applications to the 

examining attorney to consider whether the proposed 

marks constituted registrable subject matter, a different 

potential basis for rejection. The examining attorney

issued Office Actions refusing to register the proposed 

marks because they “fail to function” as trademarks, and 

are thus not registrable subject matter. In the Office 

Actions, however, the examining attorney noted that 

Light could overcome the failure-to-function rejections by 

amending the proposed marks to only seek registration of 

the stylized wording in the top left-hand corners: either 

the “SHIMMERING BALLERINAS & DANCERS” or the 

“SHIMMERING RAINFOREST.” Decision I at *1; Decision II at *1. 

Light failed to timely respond to those Office Actions, 

however, and her applications were yet again abandoned. 

Light again successfully petitioned to revive her applications, and the examining attorney considered Light’s

responses to the Office Actions. Because Light still 
IN RE: LIGHT 5

sought registration of the entire proposed marks, however, including the columns of text, the examining attorney

maintained the original failure-to-function refusals. Light 

then resumed her appeals at the Board. 

Over the next two years, Light requested several extensions of time and remands to the examining attorney, 

all of which the Board granted. In June 2011, Light filed 

a request for reconsideration by the Board. Her request 

included additional specimens showing alleged trademark 

use, as well as a new claim that the proposed marks had 

acquired distinctiveness in accordance with Section 2(f) of 

the Lanham Act. The Board remanded to the examining 

attorney to fully consider the request for reconsideration. 

Further prosecution of the marks continued in May of 

2012 with a different examining attorney. The examining 

attorney again rejected the proposed marks for failing to 

function as trademarks. She further clarified that rejection based on the additional specimens, explained why the 

claims of acquired distinctiveness failed, and rejected the

proposed amendments. Light filed responses to the Office 

Actions, but because her responses were not timely filed,

the applications were yet again abandoned. 

In January 2013, Light submitted a single petition to 

revive both abandoned applications, but only paid the fee 

owed to revive one application, $100. The USPTO accordingly issued a Notice of Deficiency asking for additional 

payment, another $100, to revive the second application. 

Light paid that fee, and both applications were revived. 

Light included with her petition additional specimens 

to support new requested amendments to show the subject matter in color. The examining attorney still refused 

to register the proposed marks because they fail to function as marks under the Lanham Act, they had not been 

shown to be a source indicator or to have acquired distinctiveness under Section 2(f), and the requested amend-
6 IN RE: LIGHT

ments effect impermissible material alterations of the 

subject matter. 

Light resumed her appeal at the Board, and both parties filed new appeal briefs. See Decision I at *2; Decision 

II at *2. The Board issued its now-challenged decisions, 

affirming the examining attorney’s refusal to register the

proposed marks. The Board first addressed the failure-tofunction rejection and concluded that (1) the number of 

words is simply “too great to be a useful means for consumers to differentiate one source from another”; (2) the 

additional specimens do not present the subject matter

such that they will be “perceived as trademark[s] or as 

indicating the source of the applicant’s identified goods,”

but rather the specimens reveal that the matters “merely 

identif[y] what appears to be a title (of a story, e.g.) and a 

list of fanciful, fictional names”; and (3) the amendments 

do not help the subject matter to function as trademarks. 

Decision I at *3–6; Decision II at *2–5. 

The Board next rejected Light’s acquired distinctiveness claim because it “appears to rest essentially on her 

alleged years of use of the applied-for mark in the manner 

shown in the previously-discussed specimens,” yet “th[ose]

specimens do not demonstrate trademark use.” Decision I

at *6; Decision II at *5. Last, the Board rejected Light’s 

proposed amendments, concluding that they would effect 

material alterations of the original subject matter. In 

particular, the Board found that (1) removing the columns 

and displaying the character names instead in a radial or 

“starburst” manner “creates a new commercial impression 

that would necessarily involve a new search by the examining attorney”; (2) converting the proposed stylized mark 

to a “single standard character mark” would likewise 

result in a mark “with a very different appearance and 

commercial impression”; and (3) adding a “colorful background, stars, and rays of light emanating from the top”

would “require an additional conflicting mark search.” 

Decision I at *7–8; Decision II at *6–7.
IN RE: LIGHT 7

Light timely appealed from the Board’s decisions. We 

have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B). 

DISCUSSION

We review the Board’s legal conclusions de novo, In re 

Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1365 (Fed. 

Cir. 1999), and the Board’s factual findings for substantial 

evidence, On-Line Careline, Inc. v. Am. Online, Inc., 229 

F.3d 1080, 1085 (Fed. Cir. 2000). Whether a mark functions as a trademark to identify the source of an entity’s 

goods, see In re Bush Bros. & Co., 884 F.2d 569, 571 (Fed. 

Cir. 1989), whether a mark has acquired distinctiveness, 

see Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 

1356, 1379 (Fed. Cir. 2012), and last, whether a proposed 

amendment represents a material alteration of a mark, In 

re Thrifty, Inc., 274 F.3d 1349, 1352 (Fed. Cir. 2001), are 

all fact questions that we review for substantial evidence. 

Light raises several challenges on appeal. First, Light 

argues that her proposed marks function as trademarks, 

and have acquired distinctiveness based on decades of use 

as such. In particular, Light contends that the proposed 

marks are “easily recognizable” and have been “placed on 

the back cover of leaflets or publications, where Trademarks are customarily found.” E.g., Appellant’s Br. 21 

(No. 2014-1598). Second, Light argues that her proposed 

amendments adding color features to the proposed marks 

do not effect material alterations, referring to Trademark 

Manual of Examining Procedure § 807.14(e)(ii) in support. 

Third, Light contends that she was “hit” with a “doubled 

Petition Fee,” and only owes $100 for the single petition to 

revive filed in January 2013. Last, Light raises a series of 

administrative challenges to the USPTO’s handling of her 

applications, including, among the alleged “102 Incidents 

of Document Mishandling,” mislabeling documents and 

uploading “skewed” versions of her proposed marks. See, 

e.g., id. at 5–14. We address and ultimately reject each of 

Light’s challenges in turn. 
8 IN RE: LIGHT

Substantial evidence supports the Board’s determination that the proposed marks merely convey information 

and do not function as trademarks. The mere fact that a 

party intends a proposed mark to function as a trademark 

is insufficient. Roux Labs., Inc. v. Clairol, Inc., 427 F.2d 

823, 828–29 (C.C.P.A. 1970) (“The mere fact that a combination of words or a slogan is adopted and used by a 

manufacturer with the intent [that it function as a 

trademark] does not necessarily mean that the slogan 

accomplishes that purpose in reality.”). Rather, the 

proposed mark must be perceived by the relevant public 

as conveying the commercial impression of a trademark. 

That is, the mark must identify the source of goods. In re 

Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1123 

(Fed. Cir. 1985) (‘Trademarks, indeed, are the essence of 

competition, because they make possible a choice between 

competing articles by enabling the buyer to distinguish 

one from the other.” (citation omitted)); see also J. Thomas 

McCarthy, 1 McCarthy on Trademarks and Unfair Competition § 3:3 (4th ed. 2014) (“The prime question is 

whether the designation in question, as actually used, will 

be recognized in and of itself as an indication of origin for 

this particular product or service.”) (footnote omitted). 

The Board made several factual findings in support of 

its conclusion that the relevant public would not perceive 

Light’s proposed marks as identifying the source of goods. 

The Board first found that the “sheer number and visual 

display of the words in the applied-for matter” make it 

“significantly more difficult” for the public to “perceive[ 

the proposed mark] as a unitary trademark.” Decision I

at *4; Decision II at *3. Each proposed mark contains 

over 570 words, arranged in column format, and, at core, 

“identifies what appears to be a title (of a story, e.g.) and a 

list of fanciful, fictional names for characters.” Decision I

at *4; Decision II at *4. Although there is no limit on the

number of words that can make up a trademark, the 

Board correctly found here that the exhaustive list of 
IN RE: LIGHT 9

characters, recited in columnar format, weighs in favor of 

finding no registrable trademark. See, e.g., Smith v. M & 

B Sales & Mfg., 13 U.S.P.Q.2d (BNA) 2002 (N.D. Cal.

1990). 

The submitted specimens do not suggest otherwise. 

The cover of the submitted playbook bears the title: “The 

Triple-Shimmering Shimmering Rainforest, Shimmering 

Ballerinas & Dancers And Shimmering Breezes Storybook 

Have Fun Playbook & Storybook For Children.” See Joint 

App. 254 (No. 2014-1597). It displays the proposed mark 

to the right of the Introduction, which similarly contains a 

list of character names. Id. at 257. As the Board found, 

at best, “readers and users of [the playbook] will understand the applied-for matter as simply identifying a title 

or theme for the playbook, [and] a corresponding list of 

character names in the playbook.” Decision I at *5; Decision II at *4. Nothing about the use of the proposed 

marks in the playbook supports Light’s argument that the 

proposed marks operate to identify the source of goods. 
10 IN RE: LIGHT

Likewise, the submitted leaflets do not indicate a use 

of the proposed marks as trademarks. As shown below, 

the leaflet states: “Be sure to look for this unique Shimmering Ballerinas & Dancers Trademark, above, to assure you that you have” the right products, “rather than 

knock-offs or plagiarized versions.” See Appellee’s Br. 13 

(No. 2014-1597); Decision I at *5. 
IN RE: LIGHT 11

Light contends that any reader of the leaflet would necessarily view the proposed mark at the top of the leaflet as 

the referred-to trademark. We disagree. As the Board 

instead found, “consumers that read this statement are 

likely to perceive applicant’s reference to the ‘Trademark’ 

as referring to the actual ‘SHIMMERING BALLERINAS 

& DANCERS” wording that is referenced in the statement 

and shown in the ‘mark’ in a larger, stylized font next to 

the ‘TM’ symbol.” Decision I at *5; accord Decision II at 

*4 (same for the second proposed mark). “At best, consumers would perceive SHIMMERING BALLERINAS & 

DANCERS as being the intended trademark while the 

CHARACTER COLLECTION (followed by a long list of 

character names) portion will merely be perceived as 

informational.” Decision I at *5; accord Decision II at *4

(same for the second proposed mark). As with the playbook, nothing about the use of the proposed marks in the 

leaflet supports Light’s argument that the marks operate 

to identify the source of goods. 

Light argues that, notwithstanding the above findings 

by the Board, her proposed marks have acquired distinctiveness and are thus registrable. We disagree. As the 

Board found, absent “evidence that the matter has been 

promoted as a trademark,” evidence noticeably absent in 

this case, “we cannot find that the applied-for mark has 

acquired distinctiveness regardless of the time the applied-for mark has been used in this manner.” See Decision I at *6; Decision II at *5; see also Trademark Manual 

of Examining Procedure § 1202.04 (“The applicant cannot 

overcome a refusal of trademark registration [for failure 

to function as a trademark] on the ground that the matter 

is merely informational by attempting to amend the 

application to seek registration [under] § 2(f) [(acquired 

distinctiveness)].”). In sum, no evidence supports Light’s 

contention that her proposed marks constitute registrable

trademarks. We accordingly affirm the Board’s decisions, 
12 IN RE: LIGHT

which affirmed the examining attorney’s failure-tofunction rejections of Light’s proposed marks. 

Turning to Light’s second challenge, we likewise find 

that substantial evidence supports the Board’s rejection of

Light’s proposed amendments for materially altering the 

original subject matter. An applicant for trademark must 

submit a drawing of the mark with the application. See 

37 C.F.R. § 2.52. The applicant may later submit an 

amendment to that drawing, however, provided “the 

proposed amendment does not materially alter the mark.” 

Id. § 2.72(a)(2). “The general test of whether an alteration is material is whether the mark would have to be 

republished after the alteration in order to fairly present 

the mark for purposes of opposition.” In re HacotColombier, 105 F.3d 616, 620 (Fed. Cir. 1997) (citation 

omitted); accord id. (“The modified mark must contain 

what is the essence of the original mark, and the new 

form must create the impression of being essentially the 

same mark.” (citation omitted)). In addition, the Board 

regularly invokes Trademark Manual of Examining 

Procedure § 807.14 for the proposition that “the addition 

of any element that would require a further search will 

[also] constitute a material alteration.” See, e.g., In re 

Pierce Foods Corp., 230 U.S.P.Q. (BNA) 307 (T.T.A.B. 

1986). 

In this case, the Board analyzed Light’s three proposed amendments and found that each constituted a 

material alteration of the subject matter because it would 

require an additional search by the examining attorney or 

republication to alert the public for purposes of opposition. Decision I at *7–8; Decision II at *6–7. Light only 

appears to challenge one such finding on appeal, namely, 

the Board’s finding that “a colorful background, stars, and 

rays of light emanating from the top left corner,” and 

removing a not insignificant number of character names 

under the guise of correcting “typographical errors,” 

amounted to a material alteration of the proposed marks
IN RE: LIGHT 13

because “they would clearly require an additional conflicting mark search by the examining attorney.” See Decision 

I at *8; Decision II at *7. Despite raising such a challenge, however, Light fails to direct us to any record

evidence to support her contention. Instead, substantial 

evidence supports the Board’s finding that the aforementioned changes are material alterations. In light of our 

standard of review, and Light’s failure to proffer evidentiary support, we must affirm the Board’s rejection of 

Light’s proposed amendments. 

Although prosecution of Light’s proposed marks has 

lasted over twelve years, involving numerous issues, the 

Board expressly acknowledged that it was only addressing two issues in its decision. See Decision I at *3; Decision II at *2. Specifically, (1) whether the failure-tofunction refusal was correct, and the acquired distinctiveness claim insufficient, and (2) whether the examining 

attorney correctly rejected the proposed amendments for 

materially altering the proposed marks. Decision I at *3; 

Decision II at *2. The Board did not address any other 

issues, such as Light’s alleged administrative impropriety 

during the course of prosecution, or Light’s contention 

that she overpaid for her revival petition in January 2013. 

The Board did not address those issues on the grounds 

that they were not relevant to the appealed action or were 

untimely. See Decision I at *2; Decision II at *2. We see 

no error in the Board’s refusal to consider those other 

issues.

CONCLUSION

We have considered Light’s remaining arguments, but 

conclude that they are without merit. For the foregoing 

reasons, we affirm the Board’s decisions. 

AFFIRMED