807.07 Color in the Mark
37 C.F.R. §2.52(b)(1) Marks that include color.
If the mark includes color, the drawing must show the mark in color, and the applicant must name the color(s), describe where the color(s) appear on the mark, and submit a claim that the color(s) is a feature of the mark.
If the applicant wishes to register the mark in color, the applicant must submit a color drawing and meet the requirements of 37 C.F.R. §2.52(b)(1). See TMEP §§807.07(a)–807.07(g) regarding the requirements for color drawings. If the applicant does not claim color as a feature of the mark, the applicant must submit a black-and-white drawing.
Generally, if the applicant has not made a color claim, the description of the mark should not mention color(s), because reference to color in the description of a non-color mark creates a misleading impression. TMEP §808.02. However, in some cases, it may be appropriate to submit a black-and-white drawing and a description of the mark that refers to black, white, and/or gray, if the applicant states that color is not claimed as a feature of the mark. This occurs where the black, white, and/or gray is used as a means to indicate areas that are not part of the mark, such as background or transparent areas; to depict a certain aspect of the mark that is not a feature of the mark, such as broken- or dotted-line outlining to show placement of the mark; to represent shading or stippling; or to depict depth or three-dimensional shape. See TMEP §§807.07(f)–807.07(f)(ii) regarding applications with black-and-white drawings and mark descriptions that refer to black, white, or gray with no corresponding color claim, TMEP §§807.07(d)–807.07(d)(iii) regarding color drawings that contain black, white, or gray, and TMEP §807.07(e) regarding black-and-white drawings and color claims.
See TMEP §§1202.05–1202.05(i) regarding the registration of marks that consist solely of one or more colors used on particular objects.
807.07(a) Requirements for Color Drawings
For applications filed on or after November 2, 2003, the USPTO does not accept black-and-white drawings with a color claim, or drawings that show color by use of lining patterns. See 37 C.F.R. §2.52(b)(1).
If the mark includes color, the drawing must show the mark in color. In addition, the application must include: (1) a claim that the color(s) is/are a feature of the mark; and (2) a color location statement in the "Description of the Mark" field naming the color(s) and describing where the color(s) appear(s) on the mark. 37 C.F.R. §2.52(b)(1). A color drawing will not publish without both of these statements. See TMEP §807.07(a)(i) regarding the color claim, and TMEP §807.07(a)(ii) regarding the color location statement.
807.07(a)(i) Color Must Be Claimed as a Feature of the Mark
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). If the color claim is incorrect, incomplete, or inconsistent with the color(s) shown on the drawing, the color claim must be corrected to conform to the color(s) depicted on the drawing. If the color claim or mark description references changeable colors, the examining attorney must require an amended mark description that deletes the reference to the color in the mark varying or being changeable and restricts the description to only those colors shown on the drawing. See TMEP §807.01. Alternatively, the applicant may amend to a black-and-white drawing, if the amendment would not constitute a material alteration. A properly worded color claim would read as follows:
The color(s) <name the color(s)> is/are claimed as a feature of the mark.
The color claim must include the generic name of the color(s) claimed. It is usually not necessary to indicate shades of a color, but the examining attorney has the discretion to require that the applicant do so, if necessary to accurately describe the mark. The color claim may also include a reference to a commercial color identification system. The USPTO does not endorse or recommend any one commercial color identification system.
In an application filed on or after November 2, 2003, an applicant cannot file a color drawing with a statement that "no claim is made to color" or "color is not a feature of the mark." If this occurs, the examining attorney must require the applicant to claim color as a feature of the mark. The applicant may not substitute a black-and-white drawing, unless the examining attorney determines that color is non-material.
807.07(a)(ii) Applicant Must Specify the Location of the Colors Claimed
If an applicant submits a color drawing, in addition to claiming the color(s), the applicant must include a separate statement specifying where the color(s) appear(s) on the mark. 37 C.F.R. §2.52(b)(1). This statement is often referred to as a "color location statement." In a TEAS application, the color location statement should be set forth in the "Description of the Mark" field. A properly worded color location statement would read as follows:
The mark consists of <specify the color(s) and literal or design element(s) on which the color(s) appear, e.g., a red bird sitting on a green leaf>.
If the color location statement is incorrect, incomplete, or inconsistent with the color(s) shown on the drawing, the color location statement must be corrected to conform to the color(s) depicted on the drawing. If the statement references changeable colors, the examining attorney must require an amended mark description that deletes the reference to the color in the mark varying or being changeable and restricts the description to only those colors shown on the drawing. See TMEP §807.01. However, if the record contains an accurate and properly worded color claim listing all the colors, and an informal description of where the colors appear, but one of the colors is omitted from the formal description of the colors in the mark, the examining attorney may enter an amendment of the color description that accurately reflects the location of all colors in the mark without prior approval by the applicant or the applicant’s qualified practitioner. See TMEP §707.02.
Example – A TEAS applicant includes a statement in the "Miscellaneous" field that refers to the mark as a blue, red, and yellow ball and includes an accurate and properly worded color claim listing all colors in the mark, but omits the color yellow from the description of the mark. The examining attorney may enter an amendment of the description to accurately reflect all colors in the mark.
The color location statement must include the generic name of the color claimed. The statement may also include a reference to a commercial color identification system. The USPTO does not endorse or recommend any one commercial color identification system.
It is usually not necessary to indicate shades of a color, but the examining attorney has the discretion to require that the applicant indicate shades of a color, if necessary to accurately describe the mark.
See TMEP §1202.05(e) for additional information regarding the requirement for a written explanation of a mark consisting solely of color.
807.07(b) Color Drawings Filed Without a Color Claim
If the applicant submits a color drawing but does not include a color claim in the written application, and if the color is a material element of the mark, the examining attorney must require the applicant to submit a claim that color(s) is/are a feature of the mark, and a separate color location statement in the "Description of the Mark" field naming the color(s) and specifying where the color(s) appear(s) on the mark. 37 C.F.R §2.52(b)(1); TMEP §§807.07(a)–807.07(a)(ii).
In an application under §1, if the examining attorney determines that color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing.
In an application under §44, the drawing of the mark must be a substantially exact representation of the mark in the foreign registration. 37 C.F.R. §2.51(c); TMEP §807.12(b). If a §44 application is based on a foreign registration that depicts the mark in color, but no claim of color is made in the registration document, the examining attorney must inquire whether the foreign registration includes the color(s) shown as claimed features of the mark. The applicant must either: (1) submit an affirmative statement that color is a feature of the mark, and comply with the United States requirements for drawings in color; or (2) submit a statement that although the mark is registered in its country of origin featuring a color depiction of the mark, no claim of color is made in that registration. If the examining attorney determines that color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing. See TMEP §§807.12(b), 1011.01, 1011.03.
In an application under §66(a), the drawing of the mark must be a substantially exact representation of the mark as it appears in the international registration. 37 C.F.R. §2.51(d); TMEP §807.12(c). The IB will include a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States. The mark in a §66(a) application cannot be amended. TMEP §807.13(b).
Generally, when a mark is depicted in color, the §66(a) application will contain a claim of the colors featured in the mark. However, because some countries accept color drawings of marks that do not include a color claim, there may be cases where no claim of color has been made in the international registration, but the reproduction of the mark contains color. In these cases, the examining attorney should require the applicant to submit either: (1) a claim of the color(s) featured in the mark and a separate statement in the "Description of the Mark" field describing where the color(s) appear(s) in the mark; or (2) a statement that no claim of color is made with respect to the international registration, and a black-and-white reproduction of the same mark depicted in the international registration to comply with United States drawing requirements. See 37 C.F.R. §2.52(b).
807.07(c) Color Drawings Filed With an Incorrect Color Claim
When the color shown on the drawing page in a paper application, or on the digitized image of the drawing in a TEAS application, is inconsistent with the color claimed in the written application (e.g., the mark is shown in blue on the drawing, but the color claimed is orange), the drawing controls. The color claim may be corrected to conform to the drawing. The drawing may not be corrected to conform to the color claim, unless the examining attorney determines that the amendment is non-material.
807.07(d) Color Drawings that Contain Black, White, or Gray
When color is claimed as a feature of the mark, the applicant must submit a color claim that identifies each color and a separate color location statement describing where each color appears in the mark. 37 C.F.R §2.52(b)(1); TMEP §§807.07(a)–807.07(a)(ii). The applicant must claim all colors shown in the mark; the applicant cannot claim color for some elements of the mark and not others. See id. For example, when the drawing includes solid black lettering as well as elements in other colors, the applicant must claim the color black as a feature of the mark and include reference to the black lettering in the color location statement. The applicant may not state that solid black lettering represents all colors, or that it represents the particular color of the label, product, packaging, advertisement, website, or other specimen on which the mark appears at any given time.
If color is claimed as a feature of the mark, the drawing may include 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 broken- or dotted-line outlining to show placement of the mark on a product or package; to represent 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, 808.01(b).
The terms "background" and "transparent areas" refer to the white or black portions of the drawing which are not part of the mark, but appear or will appear in the particular color of the label, product, packaging, advertisement, website, 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 that they represent the particular color of the label, product, packaging, advertisement, website, or other specimen on which the mark appears at any given time.
If the applicant claims color as a feature of the mark, the examining attorney must require the applicant to:
- 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 color(s) appear(s) on the mark; or
- 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.
These statement(s) may be submitted in either a written amendment to the application or by an examiner's amendment. The examining attorney must ensure that the statement(s) is entered into the Trademark database. The statement(s) will be printed on the registration certificate.
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 an enclosed white interior, or if the purple and green flower is enclosed in a green or black rectangle, square, or circle with a white interior, the applicant must explain the purpose of the interior white areas on the drawing.
807.07(d)(i) Applications Under §1
If the drawing includes black, white, gray tones, gray shading, and/or gray stippling, and also includes other colors (e.g., red, turquoise, and beige), and the color claim does not include the black/white/gray, the examining attorney must require the applicant to either: (1) add the black/white/gray to the color claim and to the color location statement; or (2) if appropriate, add a statement that "The <black/white/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/services, as shown by the specimen. 37 C.F.R. §2.51(a)–(b); see 37 C.F.R. §2.72(a)(1), (b)(1); TMEP §§807.12(a)–807.12(a)(iii).
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 depicts the lettering in a color other than solid black (e.g., green), 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) amend the color claim and the color location statement to match the new drawing, e.g., replace the word "black" with the word "green." 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.
807.07(d)(ii) Applications Under §44
If 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 United States application. If the foreign registration includes a color claim and also includes black, white, and/or gray that is not claimed as a feature of the mark, the applicant must state that the black/white/gray in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark. See 37 C.F.R. §§2.51(c), 2.72(c)(1); TMEP §§807.12(b), 1011.01.
In applications under §44, the drawing of the mark, including any color claim, must match the mark in the foreign registration. See 37 C.F.R. §2.51(c). An applicant under §44 who is claiming color in the United States 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 will not be printed on the United States registration certificate.
807.07(d)(iii) Applications Under §66(a)
If the applicant claims color as a feature of the mark, and the drawing also includes black, white, and/or gray that is not mentioned in the international registration color claim, the applicant must either: (1) claim the black/white/gray as color(s) in the United States application and describe the location of the black/white/gray; or (2) state that the black/white/gray on the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark.
807.07(e) Black-and-White Drawings and Color Claims
If an applicant submits a black-and-white drawing that is lined for color ( see TMEP §808.01(b)), or if the applicant submits a black-and-white drawing with an application that includes a color claim, the examining attorney must require the applicant to submit a color drawing, a claim that color(s) is a feature of the mark, and a separate statement naming the color(s) and describing where the color(s) appears on the mark. See TMEP §§807.07(a)–807.07(a)(ii). If, however, the examining attorney determines that the color is a non-material element of the drawing, the applicant may instead be given the option of submitting a black-and-white drawing that is not lined for color, or deleting the color claim in the written application, whichever is applicable.
If an applicant submits a black-and-white drawing that is not lined for color, and there is no color claim in the written application, generally the applicant cannot substitute a color drawing and claim color, unless the examining attorney determines that the color is a non-material element of the drawing.
807.07(f) Black-and-White Drawings that Contain Gray or Black-and-White Drawings with a Mark Description that Refers to Black, White, or Gray
807.07(f)(i) TEAS, TEAS RF, TEAS Plus, and §66(a) Applications
If 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, and/or gray, and the applicant 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, TEAS RF, or TEAS Plus application, 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 "grayscale" in reference to the drawing.
When a mark contains stippling, it is generally not necessary to require a statement that the 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 §808.01(b) regarding stippling statements.
807.07(f)(ii) Applications Filed on Paper
If the applicant submits a black-and-white drawing on paper and the application is silent about whether color is claimed as a feature of the mark, the presence of any gray in the drawing creates an ambiguity as to whether black, white, and/or gray are claimed as a feature of the mark. Similarly, if an applicant submits a black-and-white drawing on paper and the application is silent about whether color is claimed as a feature of the mark, the inclusion of a description of the mark that refers to black/white/gray creates an ambiguity as to whether black/white/gray is claimed as a feature of the mark. In these cases, the examining attorney must require that the applicant submit 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 qualified practitioner, and enter a Note to the File in the record that the mark is not in color; or
- (2) A statement that the color(s) black, white, and/or gray is a feature of the mark, and a separate statement naming the color(s) and describing where the color(s) appear(s) on the mark.
807.07(g) Drawings in Applications Filed Before November 2, 2003
Prior to November 2, 2003, the USPTO did not accept color drawings. An applicant who wanted to show color in a mark was required to submit a black-and-white drawing, with a statement describing the color(s) and where they appeared on the mark. Alternatively, the applicant could use a color lining system that previously appeared in 37 C.F.R. §2.52 but was deleted from the rule effective October 30, 1999. See 64 Fed. Reg. 48900, 48903 (Sept. 8, 1999) and 1226 TMOG 103, 106 (Sept. 28, 1999).
In applications filed prior to November 2, 2003, it was presumed that color was claimed as a feature of the mark, unless the applicant specifically stated that no claim was made to color, or that color was not claimed as a feature of the mark.
For applications filed before November 2, 2003, unless the application included a statement that color was not claimed as a feature of the mark (or that no claim was made to color), the applicant may voluntarily submit a color drawing under the current rules, with the requisite color claim and a separate description of the color(s) in the mark.
A registrant may substitute a color drawing for a black-and-white drawing in a registration where color is claimed, by filing a §7 request to amend the registration certificate. The request must include: (1) a color drawing; (2) a color claim; (3) a description of where the color(s) appear(s) in the mark; and (4) the fee required by 37 C.F.R. §2.6. See TMEP §1609.02(e).