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:
- (1) The mark is three-dimensional, or a configuration of the goods or packaging (see TMEP §§807.10, 1202.02(c)(ii));
- (2) The drawing includes broken lines to show position or placement or to indicate a portion of the product or packaging that is not part of the mark (see TMEP §§807.08, 1202.02(c)(ii));
- (3) The mark includes color (see TMEP §§807.07(a), 1202.05(e));
- (4) The mark includes motion (see TMEP §807.11); or
- (5) The mark is a sound, scent, or other non-visual mark (see TMEP §807.09).
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 relevant Trademark 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.
The foregoing procedures ensure that a description not intended for printing will not be printed. They further ensure that at the publication review stage, 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.
808.03(a) Accurate and Complete Descriptions
If the application contains an accurate and complete description of the mark, no further action regarding the description is necessary and it will be printed in the Official Gazette and on the certificate of registration. 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).
The following are examples of accurate and complete descriptions:
The mark consists of the words "SUSHI SUSHI" represented in stylized font.
Note: If an application containing this mark was submitted without a description, the description could be added by examiner’s amendment without the prior approval of the applicant (see TMEP §§707.02, 808.03(b)).
The mark consists of the wording "HEIDI.COM" in stylized font appearing below a stylized design of a girl's head.
The mark consists of the word "LULU" in stylized font having a backwards second "L" adjacent to an abstract symbol of a sun and the word "COMPANY" in stylized font positioned underneath the second "U" and the sun.
The mark consists of an image of a building with a window with four panes with the words "JUST SMILES" in a large, stylized font with lines above the dot in the letter "I" representing shine or glow and the words "DENTISTRY FOR FAMILIES ON THE GO" in smaller, block-letter font.
The mark consists of a series of circles stylistically representing a group of bubbles, such series being located on the handle of a water bottle. The outline of the bottle depicted in broken lines in the drawing is intended to show the placement of the mark when used and is not part of the mark.
Note: Any mark whose drawing includes broken lines must have a printed description.
The mark consists of the three-dimensional configuration of a recessed window portion of a thermostat. The portion of the thermostat that comprises the mark is shown in solid lines in the drawing. The matter shown in broken lines in the drawing is not part of the mark. The dotted lines merely show the position of the mark in the configuration of the goods.
Note: Any mark whose drawing includes broken lines must have a printed description.
The mark consists of the color kelly green applied to the vehicles used in performing pest-control services. The matter shown in broken lines serves to show the placement of the mark on the vehicle and is not part of the mark.
Note: Any mark whose drawing includes broken lines must have a printed description.
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 (see TMEP § 808.03(c)).
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 relevant Trademark 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 relevant Trademark 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 relevant Trademark database and must remain there for printing. For paper applications, the color location statement is placed in the "Description" field in the relevant Trademark database and must 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.
The following are examples of descriptions that may be entered by examiner’s amendment without prior approval of the applicant:
The mark consists of the stylized wording "GROB" within a rectangle.
The mark consists of the stylized wording "LIGHTYEAR ALLIANCE" with a curved line to the right of the wording.
The mark consists of the stylized wording "GSC PARTNERS" with a curved line between "GSC" and "PARTNERS".
The mark consists of the stylized letters "P" "A" "C" "T" each within a shaded circle and the stylized wording "PURE ADVANCED COSMETIC TECHNOLOGY" underneath.
The mark consists of the stylized wording "H BLOCK" within a square with a horizontal line between "H" and "BLOCK".
The mark consists of the stylized wording "REECE & NICHOLS" with the ampersand within a square.
In the foregoing examples, 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 certificate. In such cases, the "no-call" examiner’s amendment should neither be sent to the LIE nor entered for printing 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 for printing.
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 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 TMEP §§808.03(a) and 808.03(c)–808.03(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 Must Be Printed
If the examining attorney determines that a description must be printed in the Official Gazette and on the registration certificate because it is necessary to clarify the proposed mark, the examining attorney needs to 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.
The following is an example of an accurate but incomplete description where a corrected description must be printed:
The mark consists of a hot dog in a bun with face, hands and feet wearing a grass skirt and grass hat.
Note: This description is incomplete because it does not reference the two beach umbrellas and palm trees behind the hot dog. It must be completed and printed because it is necessary to clarify the mark.
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, it must not be printed in the Official Gazette and on the certificate of registration. The examining attorney must follow the procedure described in TMEP §808.03 for descriptions provided by the applicant that need not be printed.
The following are examples of accurate but incomplete descriptions where a description need not be printed:
The mark consists of a dog design.
Note: This description is incomplete because it does not include the wording in the mark. Unless it is amended to be complete, the description must not be printed in the Official Gazette and on the certificate of registration because it is not necessary to clarify the proposed mark.
The mark consists of the word "SUSHI" represented in stylized font.
Note: This description is incomplete because it does not include the second "SUSHI". Unless it is amended to be complete, the description must 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 must be corrected to accurately reflect the mark 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.
The following are examples of inaccurate descriptions:
The mark consists of two overlapping triangles with two stars positioned below.
Note: This description is inaccurate because there are three stars in the mark.
The mark consists of the design of a single grape leaf with an attached vine in front of a full moon design.
Note: This description is inaccurate because the mark contains a crescent moon design.
The mark consists of the stylized wording "FLORIDA’S FOOD SERVICE" to the left of a stylized chef design.
Note: This description is inaccurate because the term "FLORIDA" includes an "’S" in the description. The change in the spelling of "FLORIDA" would not be considered an obvious misspelling because it is unclear whether the applicant intended for the mark to include the "’S". Either the mark or the description must be amended.
The mark consists of the stylized wording "FLOODS FOR LESS" with a pool of water under the wording.
Note: This description is inaccurate because the mark includes the numeral "4" rather than the word "FOR".
The mark consists of the stylized wording "C THREE REDUCT".
Note: This description is inaccurate because the mark includes the superscript number "3" following the letter "C" rather than the word "THREE". A proper description could refer to the numeral as "3" or "CUBED".
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 §§807.14–807.14(f) regarding material alteration.
808.03(f) Updating Design Coding
Particularly when a description is not included in the initial application, the examining attorney must ensure that the design coding is updated in accordance with the description, where appropriate and necessary. The examining attorney must 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 Trademark 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.
808.03(g) Unacceptable Statements in Mark Descriptions
A statement that purports to limit a mark by excluding color(s) or other features that do not appear in a mark is not appropriate for inclusion in a description of a mark. Statements regarding any purported "exclusion" usually feature a limitation on the mark, often in an attempt to satisfy third parties that have infringement concerns. In some cases, the applicant has a written agreement with a potential opposer that addresses this issue. However, descriptions are solely to be used to describe the mark shown in the drawing and are not to be used to describe how the mark does not and will not appear. See TMEP §808.02.
Although these additional restrictive statements are uncommon, when they do appear the facts are generally as follows. The mark features a design and color is not claimed as a feature of the mark. The description of the mark is amended by the applicant to include a reference to a color or colors that the mark will not comprise. This type of statement is inappropriate and must be deleted from the description. For example, the following type of statement must not be included in a description of a mark: "The application and any registration resulting from the application exclude the color purple within or as part of the (design element) in the mark."
Thus, when the applicant has not made a color claim, the description of the mark must not mention color(s), because reference to color in the description of a non-color mark creates a misleading impression. TMEP §§807.07, 808.02.
Accordingly, the description may not be used to state any limitations as to how a mark does not and will not appear. Any such statements must be deleted from the description if it is determined that the description needs to be printed. TMEP §§808.02, 808.03. Although applicants may include such restrictive statements in the application record, they are not appropriate for the registration certificate. If it is determined that the description does not need to be printed, the description does not need to be amended to delete the restrictive statement unless some part of the description is inaccurate, in which case the restrictive statement must be deleted. TMEP §808.03(d).