808    Description of Mark

37 C.F.R. §2.37 

A description of the mark must be included if the mark is not in standard characters.  In an application where the mark is in standard characters, a description may be included and must be included if required by the trademark examining attorney.

37 C.F.R. §2.52(b)(5)  Description of mark.

A description of the mark must be included.

808.01   Guidelines for Requiring Description

For applications filed on or after May 13, 2008, a description of the mark is required for any mark not in standard characters.

Therefore, the examining attorney must require a description of the mark if:

  • the applicant is claiming a particular font style, size, or color of words, letters, or numbers (37 C.F.R. §2.52(a));
  • the mark contains a design element;
  • the mark includes non-Latin characters;
  • the mark includes non-Roman or non-Arabic numerals;
  • the mark includes uncommon punctuation or diacritical marks;
  • the mark is three-dimensional, or is a configuration of the goods or packaging (TMEP §§807.10 and 1202.02(c)(ii));
  • the drawing includes broken lines to show placement or to indicate a portion of the product or packaging that is not part of the mark (TMEP §§807.08 and 1202.02(c)(ii));
  • the mark includes color (TMEP §§807.07(a) and 1202.05(e));
  • the mark includes motion (TMEP §807.11);
  • the mark is a sound, scent, or non-visual mark (TMEP §807.09);
  • the mark appears in standard characters, but an element of the mark is unclear or ambiguous; or
  • the mark consists of characters from the standard character set (TMEP §807.03(b)), but the characters are displayed in a manner that affects the meaning or significantly contributes to the overall commercial impression of the mark, such as using standard characters that create emoticons (TMEP §807.03(c)).

37 C.F.R. §§2.37 and 2.52.

808.01(a)   Meaning of Term in Mark

A statement that a term has no meaning in the relevant industry should not be entered as a description of the mark, nor should it be printed.  If such a statement is entered as a description of the mark, the examining attorney must ensure that the statement is deleted from the "Description of the Mark" field in the Trademark database and enter an appropriate Note to the File in the record.  The document containing the information deleted from the Trademark database will remain of record for informational purposes.  See TMEP §808.03 regarding printing of descriptions of the mark.

See TMEP §§809 et seq. regarding translation and transliteration of non-English wording and non-Latin characters.

808.01(b)   Lining and Stippling Statements for Drawings

Current Practice.  For applications filed on or after November 2, 2003, the USPTO does not accept black-and-white drawings lined for color.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a).  Thus, the examining attorney should not require the applicant to enter a statement that the lining or stippling represents shading or is a feature of the mark, unless the examining attorney believes such a statement is necessary to accurately describe the mark.

See TMEP §§808.03 et seq. and 817 regarding printing of lining and stippling statements and other descriptions of the mark.

Previous Practice.  Prior to October 30, 1999, an applicant who wanted to show color in a mark was required to use the USPTO’s color lining system.  The color lining system required applicants to line their drawings using certain patterns designated for certain colors, and to provide a color lining statement describing where the colors appeared.  The color lining system was deleted from the rule effective October 30, 1999; however, during a transitional period between October 30, 1999 and November 2, 2003, the USPTO continued to accept drawings that showed color by using this lining system.  See notice at 64 Fed. Reg. 48900, 48903 (Sept. 8, 1999) and 1226 TMOG 103, 106 (Sept. 28, 1999).  When an applicant submitted a drawing that included lining that was a feature of the mark and was not intended to indicate color, the applicant was required to submit a statement to that effect, so the record would be clear as to what applicant was claiming as the mark.  Similarly, when an applicant submitted a drawing that included stippling for shading purposes, the applicant was required to submit a statement to that effect.

808.02   Description Must Be Accurate and Concise

If a description of a mark is placed in the record, the description should state clearly and accurately what the mark comprises, and should not create a misleading impression by either positive statement or omission.  The description should describe all significant aspects of the mark, including both literal elements and design elements.  Insignificant features need not be included in a description.

When a mark includes a large number of elements, they are not all necessarily significant.  For example, background design elements can sometimes be considered insignificant if they do not change the overall commercial impression of the mark.  In addition, it may be unnecessary to describe the placement of repetitive literal or design elements within a mark, as long as the description generally characterizes them and explains that the elements are repeated.  Similarly, when a mark contains a substantial number of design elements, it may only be necessary to generally state in the description those elements that capture the essence of the mark.  Please note that because of the requirement to describe where colors appear in the mark, marks that include color will generally have a more detailed description.  37 C.F.R. §2.52(b)(1).  See TMEP §§807.07(a) et seq. regarding requirements for color drawings.

If a mark contains both wording and design features, the description should describe both aspects of the mark in order to be complete.  The rare exception is for wording that is (1) not significant to the mark; and (2) would not be searched (e.g., purely informational matter such as product weight, lists of contents, and business addresses).  The better – but not mandatory – practice with descriptions of non-standard character marks that include wording is to indicate that the wording is "in stylized font."   

Generally, if the applicant has not made a color claim, the description of the mark should not mention color, because a reference to color in the description of a non-colored mark creates a misleading impression.  See TMEP §§807.07 et seq. regarding color.  However, in some cases, it may be appropriate to submit a black-and-white drawing and a description of the mark that refers to black, white, and/or gray if the applicant states that color is not claimed as a feature of the mark.  See TMEP §§807.07(f) et seq. regarding applications that include mark descriptions that refer to black, white, or gray when there is no corresponding color claim.

If a trademark or a service mark that is registered to an entity other than the applicant is used in the description of the mark, the examining attorney must require that it be deleted and that generic wording be substituted.  It is inappropriate to use a registered mark in a description because such a mark indicates origin in only one party and cannot be used to describe a mark used in connection with goods or services that originate in a party other than the registrant.  Cf. Camloc Fastener Corp. v. Grant, 119 USPQ 264, 265, n.1 (TTAB 1958) (noting that if applicant prevailed in opposition proceeding, it would be required to delete registered mark from the identification of goods set forth in the application).

A description cannot be used to restrict the likely public perception of a mark.  A mark’s meaning is based on the impression actually created by the mark in the minds of consumers, not on the impression that the applicant states the mark is intended to convey.  However, an examining attorney may defer to the applicant’s phrasing of a description, so long as the description is accurate and complete.  For example, if an element in a mark could reasonably be characterized in more than one way, the examining attorney should accept the applicant’s selection of one characterization over the other in the description.

See TMEP §808.03 regarding the examination procedure for descriptions.

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:

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 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 in the Trademark database.

The foregoing procedures ensure that a description not intended for printing is deleted from the Trademark database.  They further ensure that at the publication review stage, the description is not mistakenly re-entered into the Trademark database, because 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.  Regarding TEAS applications, please note that although TEAS Plus applications for non-standard character marks cannot be validated and filed unless an entry is made in the "Description" field, "regular" TEAS applications can be filed without entry of a description.  The "regular" TEAS application will, however, display a warning message in non-standard character mark applications where no entry has been made in the "Description of the Mark" field.  The warning message will indicate that although the description is not a filing date requirement, it must be provided at some point in the prosecution, or the application will not proceed to registration (assuming, of course, that all other requirements have been satisfied).

808.03(a)   Accurate and Complete Descriptions

If the application contains an accurate and complete description of the mark, the examining attorney may leave the description in the Trademark database for printing in the Official Gazette and on the certificate of registration.  No further action regarding the description is necessary in these situations.  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).

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.

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 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 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 Trademark database and should remain there for printing.  For paper applications, the color location statement is placed in the "Description" field in the Trademark database and should 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.

In the foregoing situations, if 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, the examining attorney must ensure the description is not entered into the Trademark database.  In such cases, the "no-call" examiner’s amendment (TMEP §707.02) should neither be sent to the LIE nor entered into the Trademark database 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 into the Trademark database.

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 (TMEP §707.02) 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 the other parts of TMEP §§808.03(c)-(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 Should be Printed

If the examining attorney determines that a description should be printed in the Official Gazette and on the registration certificate because it is necessary to clarify the proposed mark, the examining attorney must 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.

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 in TICRS, it must be deleted from the Trademark database so that it will not be printed in the Official Gazette and on the certificate of registration.  The examining attorney must follow the procedure described in §808.03 for descriptions provided by the applicant that need 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 may not remain part of the record, 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.

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 et seq. regarding material alteration.

808.03(f)   Updating Design Coding

Particularly when a description is not included in the initial application, the examining attorney should ensure that the design coding is updated in accordance with the description, where appropriate and necessary.  The examining attorney should 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.