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 published in the Trademark Official Gazette and included 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 Published
If the examining attorney determines that a description must be published in the Trademark Official Gazette and included 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 published:
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 published because it is necessary to clarify the mark.
808.03(c)(ii) Accurate but Incomplete Descriptions in Cases Where a Description Need Not Be Published
Alternatively, if the examining attorney determines that the description need not be published, the examining attorney need not require the applicant to amend or withdraw an incomplete or inartfully worded description, so long as the description does not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 In such a case, although the incomplete description remains part of the application record, it must not be published in the Trademark Official Gazette and included on the certificate of registration.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attorney must follow the procedure described in TMEP §808.03 for descriptions provided by the applicant that need not be published.
The following are examples of accurate but incomplete descriptions where a description need not be published:
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 published in the Trademark Official Gazette and included 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 published.