904.02(c) Additional Requirements
904.02(c)(i) Other Materials Required for Examination
During examination, an examining attorney also has the discretion to request additional materials, under 37 C.F.R. §2.61(b), if necessary for proper examination of the mark. TMEP §814. For example, if the mark is a configuration of the goods or of the container for the goods, the examining attorney may require one actual product or container. Or the examining attorney might require a complete copy of a publication in order to determine whether a mark is merely descriptive of the goods. See TMEP §904.02(c)(iii) regarding marks used on publications.
In specific cases, such as when an applicant submits additional materials in response to a requirement made by the examining attorney, and the materials do not meet the size parameters identified above, the USPTO may create facsimiles of these materials to be entered into the record and destroy the originals. However, the examining attorney should encourage the applicant to submit a photograph of the specimen(s) or evidence for the record.
904.02(c)(ii) Specimens for Marks Comprising Color
If color is a feature of the mark, or if the mark consists solely of color, the specimen must show use of the color. 37 C.F.R. §2.51; TMEP §807.12. Note: In an application filed on or after November 2, 2003, if an applicant submits a color drawing, or a description of the mark that indicates the use of color on the mark, the applicant must claim color as a feature of the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i).
If the applicant submits a specimen that is not in color or not in the appropriate color, the examining attorney will require the applicant to file a substitute specimen that shows use of the appropriate color(s). See TMEP §904.05 regarding substitute specimens.
See also TMEP §1202.05(f) regarding specimens showing use of marks that consist solely of color.
904.02(c)(iii) Specimens for Marks Used on Publications
An application for registration of a mark for publications is treated the same as any other application with respect to specimen requirements. The USPTO does not require a complete copy of the publication or a title page in every case. However, the examining attorney may require a copy of the publication under 37 C.F.R. §2.61(b) if he or she believes it is necessary for proper examination. For example, a copy of the publication might be necessary to determine whether a mark is merely descriptive of the goods.