808.01   Guidelines for Requiring Description

For applications filed on or after May 13, 2008, a description of the mark is required for any mark not in standard characters.

Therefore, the examining attorney must require a description of the mark if:

  • the applicant is claiming a particular font style, size, or color of words, letters, or numbers (37 C.F.R. §2.52(a));
  • the mark contains a design element;
  • the mark includes non-Latin characters;
  • the mark includes non-Roman or non-Arabic numerals;
  • the mark includes uncommon punctuation or diacritical marks;
  • the mark is three-dimensional, or is a configuration of the goods or packaging (TMEP §§807.10 and 1202.02(c)(ii));
  • the drawing includes broken lines to show placement or to indicate a portion of the product or packaging that is not part of the mark (TMEP §§807.08 and 1202.02(c)(ii));
  • the mark includes color (TMEP §§807.07(a) and 1202.05(e));
  • the mark includes motion (TMEP §807.11);
  • the mark is a sound, scent, or non-visual mark (TMEP §807.09);
  • the mark appears in standard characters, but an element of the mark is unclear or ambiguous; or
  • the mark consists of characters from the standard character set (TMEP §807.03(b)), but the characters are displayed in a manner that affects the meaning or significantly contributes to the overall commercial impression of the mark, such as using standard characters that create emoticons (TMEP §807.03(c)).

37 C.F.R. §§2.37 and 2.52.

808.01(a)   Meaning of Term in Mark

A statement that a term has no meaning in the relevant industry should not be entered as a description of the mark, nor should it be printed.  If such a statement is entered as a description of the mark, the examining attorney must ensure that the statement is deleted from the "Description of the Mark" field in TRAM, and enter an appropriate Note to the File in the record.  The document containing the information deleted from TRAM will remain of record for informational purposes.  See TMEP §808.03 regarding printing of descriptions of the mark.

See TMEP §§809 et seq. regarding translation and transliteration of non-English wording and non-Latin characters.

808.01(b)   Lining and Stippling Statements for Drawings

Current Practice.  For applications filed on or after November 2, 2003, the USPTO does not accept black-and-white drawings lined for color.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a).  Thus, the examining attorney should not require the applicant to enter a statement that the lining or stippling represents shading or is a feature of the mark, unless the examining attorney believes such a statement is necessary to accurately describe the mark.

See TMEP §§808.03 et seq. and 817 regarding printing of lining and stippling statements and other descriptions of the mark.

Previous Practice.  Prior to October 30, 1999, an applicant who wanted to show color in a mark was required to use the USPTO’s color lining system.  The color lining system required applicants to line their drawings using certain patterns designated for certain colors, and to provide a color lining statement describing where the colors appeared.  The color lining system was deleted from the rule effective October 30, 1999; however, during a transitional period between October 30, 1999 and November 2, 2003, the USPTO continued to accept drawings that showed color by using this lining system.  See notice at 64 Fed. Reg. 48900, 48903 (Sept. 8, 1999) and 1226 TMOG 103, 106 (Sept. 28, 1999).  When an applicant submitted a drawing that included lining that was a feature of the mark and was not intended to indicate color, the applicant was required to submit a statement to that effect, so the record would be clear as to what applicant was claiming as the mark.  Similarly, when an applicant submitted a drawing that included stippling for shading purposes, the applicant was required to submit a statement to that effect.