concurring.
The Board and the applicant thought that this case is governed by the provisions of 37 C.F.R. § 2.72(a), which states that
Amendments may not be made to the description or drawing of the mark if the character of the mark is materially altered. The determination of whether a proposed amendment materially alters the character of the mark will be made by comparing the proposed amendment with the description or drawing of the mark as originally filed.
Throughout the proceedings in the Patent and Trademark Office, the focus of attention was whether the character of the mark would be materially altered if the applicant were permitted to amend the original drawing of “EXAMODULE” to a drawing made up of two words, “EXA” and “MODULE.” The examiner and the Board concluded that permitting the substitution of the two word drawing for the one word original drawing would produce a material alteration under section 2.72(a).
I read the court’s opinion to say that the Board erred as a matter of law in deciding this case under 37 C.F.R. § 2.72(a). Instead, the examiner and the Board should have realized that this particular case is governed by 37 C.F.R. § 2.72(b), which permits “amendments to the description or drawing of the mark ... if warranted by the specimens ... as originally filed.”
In this case, the applicant apparently made a mistake in composing his drawing. He wrote it as “EXAMODULE.” He supplied “EXA MODULE” as his specimen. But, in his Statement, the applicant averred that the mark as actually used is shown by both the drawing and the specimen. (Compare “applicant has adopted and is using the mark shown in the accompanying drawing,” with “three specimens showing the mark as actually used are submitted herewith.”) In short, the applicant stated that both marks are in actual use. Therein lies an ambiguity about which of the two marks the applicant *1583sought to register. The court resolves that ambiguity in favor of the specimen actually submitted — a resolution which seems reasonable in the circumstances.
The examiner and the Board should have realized that this is not a case of whether the applicant sought to change the character of a mark for which registration is sought. Rather, the case asks which of the two disclosed marks the Statement says have been in use is the one sought to be registered. If the mark sought had been “EXAMODULE,” then the specimen would have been in error. The applicant apparently could have fixed that with no objection from the examiner, under 37 C.F.R. § 2.59, which permits substitution of specimens “as used on or in connection with the goods.” Here, however, the applicant wanted to register “EXA MODULE,” which required a change in the original drawing to conform to the specimen as originally filed, and to select one of the two marks the Statement says were being used at the time of the application as the mark for which registration was sought. In this case, changing the drawing of “EXAMODULE” to “EXA MODULE” is warranted by the original specimen, under section 2.72(b).
This case is problematic because the application referred to two marks as actually used in commerce. Since there is a simple and permissive way to fix the problem when the applicant wants to change specimens, I see no reason to reject section 2.72(b) as a power source to fix the problem when the applicant wants to change drawings. Our embrace of section 2.72(b), however, as the power source for compelling the amendment sought in this case, may come as a surprise to the litigants, who thus far have comprehended the case only within the confines of section 2.72(a).