| Trademarks > Trademark Examination Guides, Notes and Announcements > Examination Guide 2-08 |
|
|
|
Examination Guide 2-08
Examination Procedures for the Description of
the Mark Requirement in Trademark Rule 2.37
Issued May 8, 2008
II. GUIDELINES FOR DESCRIPTIONS
III. EXAMINATION PROCEDURE FOR DESCRIPTIONS
A. Accurate and Complete Descriptions
B. No Description in Application
C. Accurate But Incomplete Description in Application or Amendment
2. Accurate But Incomplete Descriptions in Cases Where a Description Need Not Be Printed
D. Inaccurate Description in Application or Amendment
I. INTRODUCTION
On May 13, 2008, an amendment to Trademark Rule 2.37, 37 C.F.R. §2.37 will take effect, requiring a description of any mark not in standard characters in any application filed on or after May 13, 2008. The amended rule will read as follows:
A description of the mark must be included if the mark is not in standard characters. In an application where the mark is in standard characters, a description may be included and must be included if required by the trademark examining attorney.
Conforming amendments will also take effect in 37 C.F.R. §§2.32(a) and 2.52(b)(5).
This examination guide clarifies examination procedures related to these changes. It supersedes the Trademark Manual of Examining Procedure (TMEP), fifth edition, to the extent any inconsistency exists. The effective date of this examination guide is May 13, 2008, to coincide with the effective date of the revised rules on description of the mark. Therefore, any requirements and procedures described herein that differ from those in the fifth edition of the TMEP do not apply to pending applications filed before May 13, 2008.
The purpose of the revised description requirement is to facilitate more accurate and comprehensive design coding and pseudo-mark data determinations, thereby promoting better searchability of marks within the USPTO trademark database. Information from the applicant describing the mark proves very useful to those inputting design codes and pseudo-marks. Both personnel in the Pre-Exam Unit and the examining attorneys should consider the description in assigning or reviewing design codes.
II. GUIDELINES FOR DESCRIPTIONS
In accordance with the rule changes, a description of the mark is required for any mark not in standard characters.
The description should state clearly and accurately what the mark comprises, and should not create a misleading impression by either positive statement or omission. TMEP §808.02. The description should describe all significant aspects of the mark, including literal elements as well as design elements (see examples in Appendix A for the appropriate level of detail). If the mark contains both wording and design features, the description should describe both aspects of the mark. The better – but not mandatory – practice with descriptions of non-standard character marks that include wording is to indicate that the wording is “in stylized font.”
Guidelines for treatment of incomplete and inaccurate descriptions appear in Section III.
A description cannot be used to restrict the likely public perception of a mark. A mark’s meaning is based on the impression actually created by the mark in the minds of consumers, not on the impression that the applicant states the mark is intended to convey. TMEP §808.02. An examining attorney may defer to the applicant’s phrasing of a description, so long as the description is accurate and complete. For example, if an element in a mark could reasonably be characterized in more than one way, the examining attorney should accept the applicant’s selection of one characterization over the other in the description.
For examples of acceptable descriptions, as well as examples of what would be considered incomplete or inaccurate descriptions, see Appendices A-D.
III. EXAMINATION PROCEDURE FOR DESCRIPTIONS
After having determined that a description of the mark is required because the mark is not in standard characters, the examining attorney must then consider whether the description needs to be printed in the Official Gazette and on the registration certificate. Accurate and complete descriptions may always be printed. In other situations, the decision to print – and to modify the description so that it is appropriate for printing – depends on whether, in view of the nature or drawing of the particular mark in question, a description is necessary to clarify the mark for the public.1
If the examining attorney determines that a description provided by the applicant will not be printed, notice to the applicant is not required. The examining attorney must either make a note to the file stating that the description should not be printed or issue an examiner’s amendment stating that the description will not be printed. Generally, the examining attorney may use either option, but a note to the file should be used where the examining attorney will issue an Office action regarding other matters. An examiner’s amendment without the prior approval of the applicant may be used where it is unnecessary to issue an Office action or a regular examiner’s amendment regarding other matters.
The examining attorney must then either: (1) delete the mark description from the description field in the TRAM database, or (2) send the examiner’s amendment or an email instruction (where only a note to the file was made) to the legal instruments examiner for appropriate action in the TRAM database.
The foregoing procedures ensure that a description not intended for printing is deleted from the TRAM database. They further ensure that at the publication review stage, the description is not mistakenly re-entered into the TRAM database, because the note to the file or examiner’s amendment reflects the determination not to print.
The following sections detail how to handle various scenarios relating to the description requirement. Regarding TEAS applications, please note that although TEAS Plus applications for non-standard character marks cannot be validated and filed unless an entry is made in the description field, “regular” TEAS applications can be filed without entry of a description. The “regular” TEAS application will, however, display a warning message in non-standard character mark applications where no entry has been made in the description of the mark field. The warning message will indicate that although the description is not a filing date requirement, it must be provided at some point in the prosecution, or the application will not proceed to registration (assuming, of course, that all other requirements have been satisfied).
A. Accurate and Complete Descriptions
If the application contains an accurate and complete description of the mark, the examining attorney may leave the description in the TRAM database for printing in the Official Gazette and on the certificate of registration. See TMEP §808.03. No further action regarding the description is necessary in these situations. Obvious misspellings, typographical errors and redundancies in an otherwise accurate and complete description may be corrected by examiner’s amendment without the prior approval of the applicant.
B. No Description in Application
If the requisite description is not submitted with the initial application, the examining attorney must ensure that a description is included in the record. Applications that include vague statements such as “the mark contains wording and a design,” “the mark contains a miscellaneous design,” and “the mark consists of words” should be treated as the equivalent of accurate but incomplete descriptions (see Section III.C, infra).
For TEAS-filed applications for marks that consist only of wording in stylized font, with no design element, the applicant’s completion of the Literal Element field may be accepted for purposes of compliance with the new rule, even if an unacceptably vague statement or no information is entered in the Description of the Mark field. In these cases, where the description need not be printed, the Literal Element information need not be copied into the description field in the TRAM database.
Similarly, in any application for a mark that includes color, the applicant’s provision of a color location statement (either in the original application or in response to a requirement) may be accepted for purposes of compliance with the new rule. For TEAS-filed applications, a color location statement provided in the initial application will automatically appear in the description field in the TRAM database and should remain there for printing. For paper-filed applications, the color location statement is placed in the description field in the TRAM database and should remain there for printing.
Where an Office action or regular examiner’s amendment is otherwise unnecessary, in the following situations the examining attorney may enter a description by examiner’s amendment without the prior approval of the applicant (as with any examiner’s amendment, the examining attorney is thereby providing the applicant with notice and an opportunity to disagree):
- The mark consists only of wording in stylized font, with no color claim and with no design element (note that an examiner’s amendment would only be necessary where the applicant also failed to provide the “Literal Element,” which can serve as a description for this type of mark),
- The mark includes no color claim and consists only of wording in combination with underlining or a common geometric shape used as a vehicle for the display of the wording; or
- The record already contains an informal indication of what the mark comprises, such as where the cover letter of a paper application refers to the mark as “a stylized golf ball design.” See TMEP §707.02 ex. (3).
In the foregoing situations, if a description is necessary to comply with the requirements of the rule, but need not be printed in the Official Gazette or on the registration, the examining attorney must ensure the description is not entered into the TRAM database. In such cases, the “no-call” examiner’s amendments should neither be sent to the LIE nor entered into the TRAM database by the examining attorney. Where printing of the description is unnecessary, the examiner’s amendment must indicate that the description will not be printed in the Official Gazette or on the registration certificate. This indication in the examiner’s amendment ensures that at the publication review stage, the description is not mistakenly entered into the TRAM database.
On the other hand, where an Office action or examiner’s amendment regarding other matters is necessary, a requirement for the description should always be included in the Office action or examiner’s amendment. If a response to an Office action requiring the description fails to include a description but resolves all other issues, and one of the special situations set out above applies, the examining attorney may do a “no-call” examiner’s amendment at that time. If all other issues have not been resolved, the requirement for a description must be maintained or made final, as appropriate.
For marks that include a design element of any kind that are not covered by the special situations set out above, the examining attorney must either issue a requirement for the description, or enter a description by examiner’s amendment, with the prior approval of the applicant. Once a description of the mark is received in response to an Office action or through an examiner’s amendment, the examining attorney must follow the procedures set forth in the other parts of Section III (i.e. determine whether the description is accurate and complete, accurate and incomplete, or inaccurate, and proceed accordingly).
C. Accurate But Incomplete Description in Application or Amendment
If the description accurately describes some elements of the proposed mark but does not describe other elements (see examples in Appendix B), the Office will require amendment to complete the description only if the description will be printed in the Official Gazette and on the certificate of registration.
1. Accurate But Incomplete Descriptions in Cases Where a Description Is Needed to Clarify the Mark and Should be Printed
If the examining attorney determines that a description should be printed in the Official Gazette and on the registration certificate because it is necessary to clarify the proposed mark, the examining attorney must ensure that the description accurately addresses all significant elements of the mark. If the description is incomplete, the examining attorney must require amendment to ensure that the description is complete and accurate. The amendment may be done by examiner’s amendment, with the prior approval of the applicant.
2. Accurate But Incomplete Descriptions in Cases Where a Description Need Not Be Printed
Alternatively, if the examining attorney determines that the description need not be printed, the examining attorney need not require the applicant to amend or withdraw an incomplete or inartfully worded description, so long as the description does not misdescribe those elements of the mark addressed in the description. In such a case, although the incomplete description remains part of the application record on TICRS/TDR, it must be deleted from the TRAM database so that it will not be printed in the Official Gazette and on the certificate of registration. The examining attorney must follow the procedure described above for descriptions provided by the applicant that need not be printed.
D. Inaccurate Description in Application or Amendment
If the examining attorney determines that the description misdescribes some element of the mark, such that the description is inconsistent with the mark shown on the drawing, the examining attorney must require the applicant to amend the description,even if the description will not be printed. TMEP §808.03. An inaccurate description may not remain part of the record, regardless of whether a description will be printed. The amendment of the description may be done by examiner’s amendment, with the prior approval of the applicant.
E. Amending Descriptions
Generally, amending the description of the mark is liberally permitted so long as the drawing supports the description. In rare cases where the amendment of the description constitutes a material alteration of the mark on the drawing or of the description filed with the original application, amendment will not be permitted. See 37 C.F.R. §2.72; In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001). See TMEP §§807.14 et seq. regarding material alteration.
F. Updating Design Coding
Particularly when a description is not included in the initial application, the examining attorney should ensure that the design coding is updated in accordance with the description, where appropriate and necessary. Consistent with previous practice, the examining attorney should ensure the design coding of all significant elements of the mark, specifically those that the examining attorney used in conducting a search. Please note, if additional codes beyond those searched have been coded for a particular design, deleting the extra codes is unnecessary. The examining attorney may update the design code field by making the appropriate entries in the TRAM database or by sending an e-mail to the TM Design Code Correct mailbox that contains instructions regarding the changes to be made.
APPENDIX A
Examples of accurate and complete descriptions.
The mark consists of the words “SUSHI SUSHI” represented in stylized font.
Note: If an application containing this mark was submitted without a description, the description could be added by examiner’s amendment without the prior approval of the applicant.
The mark consists of the wording “HEIDI.COM” in stylized font appearing below a stylized design of a girl's head.
The mark consists of the word “LULU” in stylized font having a backwards second “L” adjacent to an abstract symbol of a sun and the word “COMPANY” in stylized font positioned underneath the second “U” and the sun.
The mark consists of an image of a building with a window with four panes with the words “JUST SMILES” in a large, stylized font with lines above the dot in the letter “I” representing shine or glow and the words “DENTISTRY FOR FAMILIES ON THE GO” in smaller, block letter font.
The mark consists of the words “MAKING IT” in black italic script with an orange carrot with a green leaf inserted as the upright stem of the letter “K”; and the word “MEATLESS” in green bold face block font, with slight shadowing in black.
Note: This mark must have a printed description because the mark includes color.
The mark consists of a series of circles stylistically representing a group of bubbles, such series being located on the handle of a water bottle. The outline of the bottle depicted in broken lines in the drawing is intended to show the placement of the mark when used and is not part of the mark.
Note: This mark must have a printed description because the drawing includes broken lines to show placement.
The mark consists of the three-dimensional configuration of a recessed window portion of a thermostat. The portion of the thermostat which comprises the mark is shown in solid lines in the drawing. The matter shown in broken lines in the drawing is not part of the mark. The dotted lines merely show the position of the mark in the configuration of the goods.
Note: This mark must have a printed description because the mark is three-dimensional and the drawing includes broken lines to show placement.
The mark consists of the color yellow used on a portion of the goods. The matter shown in broken lines is not part of the mark and serves only to show the placement of the mark.
Note: This mark must have a printed description because the mark includes color and the drawing includes broken lines to show placement.
The mark consists of the color kelly green applied to the vehicles used in performing pest control services. The matter shown in broken lines serves to show the placement of the mark on the vehicle and is not part of the mark.
Note: This mark must have a printed description because the mark includes color and the drawing includes broken lines to show placement.
APPENDIX B
Examples of accurate but incomplete descriptions.
The mark consists of a dog design.
Note: This description is incomplete because it does not include the wording in the mark. Unless it is amended to be complete, the description must be deleted from the TRAM database and not printed in the Official Gazette and certificate of registration because it is not necessary to clarify the proposed mark.
Note: This mark does not need a printed description.
The mark consists of a hot dog in a bun with face, hands and feet wearing a grass skirt and grass hat.
Note: This description is incomplete because it does not reference the two beach umbrellas and palm trees behind the hot dog. This description may not be deleted from the TRAM database. It must be completed and printed because it is necessary to clarify the mark.
The mark consists of the word “SUSHI” represented in stylized font.
Note: This description is incomplete because it does not include the second “SUSHI.” Unless it is amended to be complete, the description must be deleted from the TRAM database and not printed. This mark does not need a printed description.
APPENDIX C
Examples of inaccurate descriptions.
The mark consists of two overlapping triangles with two stars positioned below.
Note: This description is inaccurate because there are three stars in the mark.
The mark consists of the design of a single grape leaf with an attached vine in front of a full moon design.
Note: This description is inaccurate because the mark contains a crescent moon design.
The mark consists of the stylized wording “FLORIDA’S FOOD SERVICE” to the left of a stylized chef design.
Note: This description is inaccurate because the term “FLORIDA” includes an “’S” in the description. The change in the spelling of “FLORIDA” would not be considered an obvious misspelling because it is unclear whether the applicant intended for the mark to include the “’S.” Either the mark or the description must be amended.
The mark consists of the stylized wording “FLOODS FOR LESS” with a pool of water under the wording.
Note: This description is inaccurate because the mark includes the numeral “4” rather than the word “FOR.”
The mark consists of the stylized wording “C Three Reduct”.
Note: This description is inaccurate because the mark includes the superscript number “3” following the letter “C” rather than the word “Three.” A proper description could refer to the numeral as “3” or “cubed.”
APPENDIX D
Examples of descriptions that may be entered by no-call examiner’s amendment.
The mark consists of the stylized wording “GROB” within a rectangle.
Note: This mark does not need a printed description.
The mark consists of the stylized wording “LIGHTYEAR ALLIANCE” with a curved line to the right of the wording.
Note: This mark does not need a printed description.
The mark consists of the stylized wording “GSC PARTNERS” with a curved line between “GSC” and “PARTNERS.”
Note: This mark does not need a printed description.
The mark consists of the stylized wording “PortugalTrade” and the stylized letters “pt” within a circle.
Note: This mark does not need a printed description.
The mark consists of the stylized letters “P” “A” “C” “T” each within a shaded circle and the stylized wording “PURE ADVANCED COSMETIC TECHNOLOGY” underneath.
Note: This mark does not need a printed description.
The mark consists of the stylized wording “H BLOCK” within a square with a horizontal line between “H” and “BLOCK”.
Note: This mark does not need a printed description.
The mark consists of the stylized wording “REECE & NICHOLS” with the ampersand within a square.
Note: This mark does not need a printed description.
1. For example, pursuant to longstanding policy, a description must always be printed if: (1) the mark is three-dimensional, or a configuration of the goods or packaging (TMEP §§807.10, 1202.02(d)); (2) the drawing includes broken lines to show position or placement or to indicate a portion of the product or packaging that is not part of the mark (TMEP §§807.08, 1202.02(d)); (3) the mark includes color (TMEP §§807.07(a), 1202.05(e)); (4) the mark includes motion (TMEP §807.11); or (5) the mark is a sound, scent, or other non-visual mark. (37 C.F.R. §§2.37, 2.52; TMEP §808.01). In rare instances, a description must be printed when the mark consists of characters from the standard character set, but the characters are displayed in a manner that affects the meaning or significantly contributes to the overall commercial impression of the mark, for example, emoticons such as :) or :(. Note that a standard character claim is not acceptable where the characters form shapes or designs, such as emoticons.
|
|
| Call the Trademark Assistance Center for help on trademark matters. Send questions about USPTO programs and services to the USPTO Contact Center (UCC). You can suggest USPTO webpages or material you would like featured on this section by E-mail to the webmaster@uspto.gov . While we cannot promise to accommodate all requests, your suggestions will be considered and may lead to other improvements on the website. |
|
|
=online
business system 
=fees 
=forms
=help 
=laws/regulations 