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Examination Guide 2-06
EXAMINATION PROCEDURES FOR DRAWINGS THAT CONTAIN BLACK, WHITE, OR GRAY
Issued November 13, 2006
INTRODUCTION
This examination guide addresses common scenarios and clarifies procedures to follow when black, white, and/or gray appear in a drawing. Specifically, it discusses how to examine applications in which: (1) the application has a black-and-white drawing, and the drawing contains gray 1 or the description of the mark refers to black, white, and/or gray; and (2) the applicant has claimed color as a feature of the mark and the drawing contains black, white, or gray. This examination guide supersedes Examination Guide 1-05 and the current TMEP, to the extent any inconsistency exists.
TERMINOLOGYThe procedures outlined below reference the following terms:
• Color claim – a statement naming the color(s) that are a feature of the mark
• Color location statement – a separate statement describing where the color(s) appear on the mark
• Description of the mark – a statement describing elements of the mark
These terms correspond to separate fields in the Office's TRAM (Trademark Reporting and Monitoring) and TradeUps (Trademark Application Data Entry and Update) systems. 2
I. APPLICATIONS WITH (1) A BLACK-AND-WHITE DRAWING THAT CONTAINS GRAY OR (2) A BLACK-AND-WHITE DRAWING AND A MARK DESCRIPTION THAT REFERS TO BLACK, WHITE, OR GRAY
A. TEAS, TEAS Plus, and Section 66(a) ApplicationsIf the applicant submits a black-and-white drawing that contains gray or stippling that produces gray tones, and the application states that color is not claimed as a feature of the mark, no further inquiry is required. Similarly, if an applicant submits a black-and-white drawing and a description of the mark that references black, white, or gray, and the application states that color is not claimed as a feature of the mark, no further inquiry is required and no change to the description of the mark is required.
The word “No” in the “Color Mark” field on a TEAS or TEAS Plus application, 3 or in the “Mark in Color” field on a §66(a) application, is sufficient to indicate that color is not claimed as a feature of the mark, even if the application contains the notation “greyscale” in reference to the drawing. 4
For TEAS or TEAS Plus applications where color is claimed, see Part II of this examination guide.
B. Applications Filed on PaperII. APPLICATIONS IN WHICH COLOR IS CLAIMED AS A FEATURE OF THE MARK AND THE DRAWING CONTAINS BLACK, WHITE, OR GRAYIf the applicant submits a black-and-white drawing on paper and is silent about whether color is claimed as a feature of the mark, the presence of gray in the drawing creates an ambiguity as to whether black, white, and/or gray are intended to be colors that are a feature of the mark. 37 C.F.R. §2.52(b)(1). Similarly, if an applicant submits a black-and-white drawing on paper and is silent about whether color is claimed as a feature of the mark, a description of the mark that refers to black, white, and/or gray creates an ambiguity as to whether black, white, and/or gray are intended to be colors that are a feature of the mark. In these cases, the record must contain one of the following:
(1) A statement that the mark is not in color. The applicant may submit the statement, or the examining attorney may obtain the information in a telephone interview or e-mail exchange with the applicant or the applicant's attorney, and enter a note to the file that the mark is not in color.
(2) A statement that the colors black, white, and/or gray are features of the mark, and a description of the location of the colors. For paper drawings where color is claimed, s ee Part II of this examination guide.
When color is claimed as a feature of the mark, the applicant must submit a statement that identifies each color and describes where each color appears in the mark. 37 C.F.R 2.52(b)(1); TMEP §807.07 et seq. Often, however, it is not clear whether the applicant intends to claim color in areas of the mark that appear black, white, or gray on the drawing.
If color is claimed as a feature of the mark, all colors in the mark must be claimed.If the applicant elects to claim color as a feature of the mark, the applicant must claim all colors shown in the mark; the applicant cannot claim color for some elements of the mark and not others. For example, when the drawing includes solid black lettering as well as elements in other colors, the applicant must claim the black lettering as a feature of the mark and include black in the color location statement. The applicant may not state that solid black lettering represents all colors, or the particular color of the label, product, packaging, advertisement, web site, or other specimen on which the mark appears at any given time.
All black, white, or gray shown on the drawing must be claimed or explained.If color is claimed as a feature of the mark, a drawing may include the colors black, white, and/or gray used in two ways: (1) as claimed features of the mark; and/or (2) as a means to depict a certain aspect of the mark that is not a feature of the mark , such as dotted or broken-line outlining to show placement of the mark on a product or package; shading or stippling to depict depth or three-dimensional shape; or to indicate areas that are not part of the mark, such as background or transparent areas. See TMEP §§807.08 and 808.01(d).
The terms “background” and “transparent areas” refer to the white or black portions of the drawing that are not part of the mark, but appear or will appear in the particular color of the label, product, packaging, advertisement, web site, or other acceptable specimen on which the mark is or will be displayed. The applicant may not claim that the background or transparent areas represent all colors or the particular color of the label, product, packaging, advertisement, web site, or other specimen on which the mark appears at any given time.
If the applicant claims color as a feature of the mark, the applicant also must describe the purpose of any black, white, and/or gray shown on the drawing that is not claimed as a feature of the mark. For example, the applicant may state: “The bottle shape shown in broken lines is not part of the mark and merely indicates the placement of the mark on the goods” or “The gray shading is not part of the mark and merely depicts depth.”
The only exception to the requirement to claim or explain any black, white, and/or gray shown on the drawing is that if the background of the drawing is white, and it is clear that the white background is not part of the mark, no explanation of the white background is required. For example, if the drawing depicts the letters “ABC” in solid blue on a white background, or depicts a solid purple and green flower on a white background, no statement about the white background is required. On the other hand, if the shape of each of the letters “ABC” is outlined in blue with a white interior, or if the purple and green flower is enclosed in a green or black rectangle, square, or circle, the applicant must explain the purpose of the interior white areas on the drawing.
A. Applications under Section 1If the drawing includes black, white, gray tones, gray shading, or gray stippling, and also includes other colors ( e.g ., red, turquoise, and beige), and the color claim does not include the black, white, or gray, the examining attorney must require the applicant to: (1) add the black, white, or gray to the claim of color and to the color location statement; or (2) if appropriate, add a statement that “The black, white, or gray in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark.”
Drawing must match the specimen of use.The drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods or services, as shown by the specimen. 37 C.F.R. §§2.51 and 2.72(a)(1); TMEP §807.12(a). For example, if the drawing shows a red flower and the letters XYZ in the color black, the specimen must show the mark in the same colors.
If the specimen does not depict the lettering in solid black, the applicant must (1) submit an amended drawing that depicts the lettering in the color shown on the specimen, if the amendment would not materially alter the mark; and (2) add the color to the color claim (if it does not appear elsewhere in the mark) and the color location statement. Alternatively, the applicant may submit a substitute specimen showing use of the mark in the colors depicted on the drawing, or, if deleting the colors from the drawing would not materially alter the mark, the applicant may delete the color claim and substitute a black-and-white drawing for the color drawing. 37 C.F.R. §2.72; TMEP §807.14 et seq .
B. Applications under Section 44If the applicant claims any color as a feature of the mark in the foreign registration, the applicant must claim the same color(s) in the U.S. application. If the foreign registration includes a color claim and also includes black, white, or gray that is not claimed as a feature of the mark, if appropriate, the applicant must state that the black, white, and/or gray in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark. 37 C.F.R. §§2.51(c) and 2.72(c)(1); TMEP §§807.12(b), and 1011.01.
C. Applications under Section 66(a)If the applicant claims color as a feature of the mark, and the drawing also includes black, white, or gray, the applicant must either (1) claim them as colors in the U.S. application and describe their location; or (2) if appropriate, state that the black, white, and/or gray in the drawing represents background, outlining, shading, and/or transparent areas and are not part of the mark. 5
D. Procedures for Applications with a Color Claim and a Drawing that Includes Black, White, or Gray• The applicant must: (1) state that the color(s) black, white, and/or gray (and all other colors in the drawing) are claimed as a feature of the mark, and describe where the colors appear on the mark; or (2) if appropriate, state that the black, white, and/or gray in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark.
• The applicant must submit the statement in either a written amendment to the application or by an examiner's amendment.
• The examining attorney must enter, or ask the LIE to enter, the statements into the TradeUps database. Statements regarding background, outlining, shading, and/or transparent areas should be entered in the color location field. The statements will be printed on the registration certificate.
• In applications under §44, the drawing of the mark, including any color claim, must match the mark in the foreign registration. An applicant under §44 who is claiming color in the U.S. application must state for the record that the foreign registration includes a claim of color, unless the foreign registration clearly indicates that color is a feature of the registered mark. The statement that the foreign registration includes a claim of color should not be entered into the TradeUps database and will not be printed on the registration certificate.
1 These procedures also apply to drawings with stippling that produces gray tones.
2 The Trademark Electronic Application System (TEAS) application and response to office action forms contain only two fields for these statements. If claiming color as a feature of the mark, the applicant must enter the specific color claimed ( e.g., red and blue) in the provided text field. The applicant must then enter in a second text field a description of the mark for any mark in special form. If color is claimed, the nature and location of the colors must be entered in the same text field as the mark description.
3 TEAS and TEAS Plus applications filed after November 2006 that do not claim color will require the applicant to affirmatively state that color is not claimed as a feature of the mark. The statement will then be entered automatically into the mark description field and printed on the registration certificate.
4 In a §66(a) application a “TM IMAGE: COLOR” field also appears that will state “yes,” “no,” or “greyscale.” This field merely indicates the technical nature of the drawing. It is not a statement made by the applicant, and must be ignored when determining whether the applicant has claimed color.
5Some foreign countries do not require applicants to list the colors claimed as a feature of the mark. If a §66(a) application includes a claim of color ("Mark in Color: Yes"), the applicant must claim or explain the use of all colors depicted in the drawing even though they are not itemized in the International Registration.
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