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 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.