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.