1904.02(k) Drawings and Descriptions of the Mark
Though the mark in a §66(a) application may not be amended, the applicant must comply with the U.S. requirements regarding drawings of the mark. 15 U.S.C. §1141h(a); 37 C.F.R. §§2.52, 7.25(a).
If the drawing does not meet U.S. requirements (e.g., due to the improper inclusion of the federal registration symbol ® or the unacceptable reproductive quality of the image), the examining attorney will require a substitute drawing. Furthermore, if the reproduction of the mark in the international registration consists of multiple renditions of a three-dimensional mark, the applicant will be required to either: (1) comply with the U.S. requirement to depict the mark in a single rendition, 37 C.F.R. §2.52(b)(2); or (2) petition the Director to waive this requirement. See TMEP §807.10 regarding drawings of three-dimensional marks and Chapter 1700 regarding petitions.
If the international registration contains a color claim and/or color location statement, but it is incorrect, incomplete, or inconsistent with the color(s) shown on the drawing, the color claim and/or the color location statement must be corrected to conform to the color(s) depicted on the drawing. See TMEP §§807.07(a)-(a)(ii), (c).
No color claim and color drawing. If the international registration contains no color claim, but there is a color drawing in the international registration, the applicant must either: (1) submit a claim of the color(s) featured in the mark and describe their location; or (2) state for the record that no claim of color is made with respect to the international registration, and submit a substitute drawing that is a black-and-white reproduction of the same mark depicted in the international registration. See TMEP §807.07(b).
Color claim and black-and-white drawing. If the international registration contains a color claim, but there is a black-and-white drawing in the international registration, the applicant must: (1) submit a substitute drawing that is a color reproduction of the same mark depicted in the international registration; (2) state for the record that the substitute drawing is a color reproduction of the same mark depicted in the international registration; and (3) submit a color location statement describing where the color(s) appear(s) in the mark. See TMEP §§807.07(a)–(a)(ii). If the color claim and/or color location statement is incorrect, incomplete, or inconsistent with the color(s) shown on the substitute drawing, the color claim and/or the color location statement must be corrected to conform to the color(s) depicted on the substitute drawing. See TMEP §§807.07(a)–(a)(ii), (c). The applicant may not delete the color claim because it is part of the international registration. See 15 U.S.C. §1141e; Articles 3-4; Regs. Rules 9(4)(vii), 9(5)(d)(v), 14(2)(i). If the color claim was included in the §66(a) application by mistake, the applicant may request a correction of the record from the IB. The applicant may also request suspension of the application and must include a copy of the request for correction filed with the IB. See TMEP §716.02(g) regarding suspending an application pending receipt of a correction from the IB and §1906.01(f) regarding requesting correction of errors in the international registration.
A §66(a) applicant must also comply with U.S. requirements regarding descriptions of the mark. 37 C.F.R. §§2.37, 2.52(b)(5), 7.25(a).
With respect to sound marks and other non-visual marks, if the international registration contains a visual depiction of some kind, such as a musical staff corresponding to the notes of a sound mark, the applicant will be required to comply with the U.S. requirements for a detailed description of the mark. See TMEP §1011.04.