1202.02(c) Drawing and Description of Mark in Trade Dress Applications
Applicants often submit drawings and descriptions of marks depicting trade dress and containing matter that is: (1) not part of the mark; (2) functional; (3) non-distinctive but capable; (4) inherently distinctive; or (5) any combination of these factors. To ensure proper examination, drawings and descriptions of these marks must accurately depict the mark the applicant intends to register.
If the drawing does not meet the requirements of 37 C.F.R. §2.52, the examining attorney must require the applicant to submit a substitute drawing and a substitute description of the mark. The examining attorney may require the applicant to provide additional information, such as pictures of the goods, samples, or other relevant materials pursuant to 37 C.F.R. §2.61(b), to assist in assessing the accuracy and completeness of the drawing and in crafting a comprehensive description of the mark.
1202.02(c)(i) Drawings in Trade Dress Applications
Drawings of trade dress marks, including three-dimensional product design and product packaging, may not contain elements that are not part of the mark. If the mark comprises the design of only a portion of the product or container, solid lines must be used on the drawing to show the elements of the product or container that are claimed as part of the mark, and broken or dotted lines must be used to indicate the portion of the product or container that is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); see In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980) (affirming the functionality of a circular-shaped container for the goods and the requirement for an amended drawing to either delete the representation of the container from the drawing or show it in dotted lines); TMEP §807.08.
Additionally, broken or dotted lines must be used to indicate elements that are functional or that are included on the drawing merely to show the position of the claimed portion of the mark. The removal or deletion of functional matter that is claimed as part of the mark is permitted and generally does not constitute a material alteration of the mark, regardless of the filing basis, if the functional matter is separable from the other elements in the mark. Since functional features are never capable of acquiring trademark significance and are unregistrable, much like informational matter, they are not part of the mark and usually may be removed or deleted from the drawing by showing them in broken or dotted lines. Doing so constitutes an amendment of the drawing rather than an amendment of the mark.
In the limited circumstance where a proposed trade dress mark is not functional overall, but contains insignificant elements that are functional, the examining attorney must issue a requirement for an amended drawing and allow the applicant to remove or delete the functional elements or depict them in broken or dotted lines to reflect that they are not claimed as features of the mark. See TMEP §1202.02(a)(v) regarding evidence and considerations regarding functionality determinations. The Office action must also indicate that, pending receipt of a proper amended drawing and mark description, registration is refused because the applied-for mark includes elements that are functional. The statutory basis for the refusal is §2(e)(5) of the Trademark Act, 15 U.S.C. §1052(e)(5).
In such a case, disclaimer of the functional elements is not appropriate because they do not form a part of the mark and are not capable of functioning as a trademark. See In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983). A disclaimer states that the applicant does not claim exclusive rights to matter in the mark apart from the mark as a whole. This means that the applicant maintains rights in the disclaimed matter as part of its own mark. Therefore, with respect to three-dimensional trade dress marks, matter that is functional or intended to show placement only is not part of the mark and should not be disclaimed. Representations of certain non-distinctive but capable features of a mark may be disclaimed in the limited circumstance discussed below.
Since elements on the drawing shown in broken or dotted lines are not part of the mark, they are excluded from the examining attorney’s consideration during any §2(d) (likelihood of confusion) analysis. See In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1382 (TTAB 2006).
In rare instances where it is impractical to render certain elements of a mark in dotted or broken lines - for example, if those elements are proportionally so small as to render dotted lines illegible - or if dotted lines would result in an unclear depiction of the mark, the applicant may use solid lines. However, the applicant must insert a statement in the description of the mark identifying these elements and declaring that these elements are not part of the mark and that they serve only to show the position of the mark on the goods, as appropriate.
Elements of a mark, such as features of non-functional product packaging or product design or configuration, that have acquired distinctiveness may appear in solid lines on the drawing as part of the mark. Such elements may be removed from the mark only if the removal thereof does not result in material alteration.
A photograph of the applied-for trade dress is acceptable as a drawing if it otherwise meets the drawing requirements (e.g., it does not contain extraneous, purely informational matter such as net weight, contents, or business addresses) and it fairly represents the mark. Note that, although the mark in a §66(a) application cannot be amended, the applicant must comply with the United States requirements regarding drawings of the mark, and an amendment of the drawing for the purpose of compliance with United States law will be accepted. See TMEP §1904.02(j)–(k). Therefore, in §66(a) applications, amendments to delete extraneous matter from photographs, or amendments of drawings from photographs to illustrated renderings showing elements of the mark in dotted or broken lines, will be accepted and will not be considered a material alteration.
1202.02(c)(ii) Descriptions of Trade Dress Marks Required
Trade dress applications must include an accurate description of the mark. See 37 C.F.R. §2.37. If an acceptable statement describing the mark is not in the record, the examining attorney must require the applicant to submit a description to clarify what the applicant seeks to register. The description must adequately describe the mark, with unnecessary matter kept to a minimum. The description must clearly indicate that the mark is "three-dimensional" and constitutes a "design" or "configuration" of the goods themselves or "packaging" or "container" in which the goods are sold, or the trade dress (e.g., interior of a restaurant, exterior of a retail establishment, or point-of-sale-display) for the services offered. If applicable, the description must specify which elements on the drawing constitute the mark and are claimed as part of the mark and which are not. The description of the mark must make clear what any dotted or broken lines represent and include a statement that the matter shown in dotted or broken lines is not part of the mark. See 37 C.F.R. §2.52(b)(4); TMEP §§808-808.03(f). The description must also avoid use of disclaimer-type language, such as "no claim is made to the …," because of the different legal significance of using broken lines versus submitting a disclaimer. See TMEP §1202.02(c)(iii) regarding disclaimers of unregistrable elements of trade dress marks.
During the prosecution of a trade dress application, if the applicant is required to submit an amended drawing (e.g., to delete functional matter by depicting it in broken or dotted lines), the examining attorney must also require a corresponding amended description.
Examples of acceptable language for this purpose are: "The broken lines depicting [describe elements] indicate placement of the mark on the goods and are not part of the mark" or "The dotted lines outlining [the goods] are intended to show the position of the mark on the goods and are not part of the mark."
For example, for the mark below,
an appropriate description (and color claim) of the mark could read:
The colors white, blue, light blue, and silver are claimed as a feature of the mark. The mark consists of the color blue applied to the cap of the container of the goods, a white background applied to the rest of the container, a blue rectangle with a silver border, a light blue curving band, and three light blue droplets. The dotted lines outlining the container and its cap indicate placement of the mark on the goods and are not part of the mark.
For the mark below,
an appropriate description (and color claim) of the mark would read:
The color red is claimed as a feature of the mark. The mark consists of a single transverse red stripe applied adjacent to one end of the elongated packaging for the goods. The dotted outline of the packaging is intended to show the position of the mark and is not part of the mark.
And for the mark below,
an appropriate description of the mark would read:
The mark consists of a three-dimensional configuration of a stringed musical instrument body. The neck, peghead, and other instrument parts shown in broken lines serve to show positioning of the mark and form no part of the mark.
The examining attorney must ensure that the description statement has been entered into the Trademark Reporting and Monitoring ("TRAM") database, so that it will be printed in the Official Gazette and on the certificate of registration. See TMEP §817.
See TMEP §§1202.05(d)(i) and (d)(ii) regarding drawings in applications for color marks consisting solely of one or more colors.
1202.02(c)(iii) Disclaimers of Unregistrable Elements of Trade Dress Marks
Where the trade dress as a whole is registrable but contains elements that are not inherently distinctive (i.e., they are either capable of registration upon proof of acquired distinctiveness or incapable of acquiring trademark significance because, for example, they are generic), these elements generally must be disclaimed. See 15 U.S.C. §1056; TMEP §1213 regarding disclaimers. Trade dress marks generally are not considered unitary, as each of the elements normally creates a separate commercial impression. As stated in the Federal Circuit decision In re Slokevage, 441 F.3d 957, 963, 78 USPQ2d 1395, 1400 (Fed. Cir. 2006), "[m]oreover, trade dress, by its nature, contains distinct elements and is characterized as the combination of various elements to create an overall impression." Although each element is combined with others to form one composite mark, each element retains its separate commercial impression.
If the mark consists of inherently distinctive elements combined with elements that are not inherently distinctive but are capable, and the applicant indicates that the capable matter is claimed as part of the mark, a disclaimer is appropriate. See TMEP §1212.02(e) regarding disclaimers of unregistrable components in applications to register marks on the Principal Register under §2(f). See also In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) ("[I]t is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f).").
A disclaimer is not an appropriate means of addressing functional matter in a trade dress mark. See In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983). Instead, an amendment of the drawing to depict the functional elements in broken or dotted lines should be required since functional matter is not part of the mark and is never capable of acquiring trademark significance. See TMEP §1202.02(c)(i).
Regarding disclaimers of unregistrable components in applications to register marks on the Supplemental Register, see In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) ("Section 6 is equally applicable to the Supplemental Register."); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977) (mark comprising stylized lettering of BALSAM, with disclaimer of "BALSAM," found registrable on Supplemental Register for hair conditioner and hair shampoo); In re Carolyn’s Candies, Inc., 206 USPQ 356, 360 (TTAB 1980) ("Section 6 of the Trademark Act of 1946, which provides for the disclaimer of ‘unregistrable matter’, does not limit the disclaimer practice to marks upon the Principal Register.").
1202.02(c)(iv) Three-Dimensional Marks
In an application to register a mark with three-dimensional features, the applicant must submit a drawing that depicts the mark in a single rendition. 37 C.F.R. §2.52(b)(2). See TMEP §807.10. In order to accurately reflect the exact nature of the applied-for mark, the mark description must state that the mark is three-dimensional in nature. This feature of the mark must be shown in the supporting specimens of use for the drawing to comprise a substantially exact representation of the mark as actually used. Conversely, a three-dimensional specimen would not be acceptable to show use for a mark that is described or depicted as a two-dimensional mark. If the applicant believes it cannot adequately display its mark in a single rendition, it may petition the Director to waive the requirement and accept a drawing featuring multiple views of the mark. 37 C.F.R. §2.146(a)(5).