808.03   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 should 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.

For example, pursuant to longstanding policy, a description must always be printed if:

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 (TMEP §807.03(c)).

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 enter a Note to the File in the record 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 (see TMEP §707.02) 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 e-mail instruction (where only a Note to the File was entered) to the LIE 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 explain 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).

808.03(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.  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 (see TMEP §707.02).

808.03(b)   No Description in Application

If the 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.

For TEAS 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 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 of the Mark" field in the TRAM database.

Likewise, for §66(a) applications for marks that consist only of wording in stylized font, with no design element, the applicant’s completion of the "Textual Elements of Mark" field may be accepted for purposes of compliance with the rule.  In these cases, where the description need not be printed, the "Textual Elements of Mark" 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 rule.  For TEAS 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 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.

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 amendment (TMEP §707.02) 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 description should be required in the Office action or entered by 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 (TMEP §707.02) 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 TMEP §§808.03(c)-(d) (i.e., determine whether the description is accurate and complete, accurate and incomplete, or inaccurate, and proceed accordingly).

808.03(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, the USPTO will require amendment to complete the description only if the description will be printed in the Official Gazette and on the certificate of registration.

808.03(c)(i)   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.

808.03(c)(ii)   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 in TICRS, 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 in §808.03 for descriptions provided by the applicant that need not be printed.

808.03(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.  An inaccurate description may not remain part of the record, regardless of whether the description will be printed.  The amendment of the description may be done by examiner’s amendment, with the prior approval of the applicant.

808.03(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.

808.03(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.  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.  The examining attorney may update the "Design Code" field by making the appropriate entries in the TRAM database or by sending an e-mail message to the internal TM Design Code Correct mailbox that contains instructions regarding the changes to be made.

If additional codes beyond those searched have been coded for a particular design, deleting the extra codes is unnecessary.