807    Drawing

The drawing shows the mark sought to be registered.  37 C.F.R. §2.52.  An applicant must submit a clear drawing with the original application to receive a filing date in any application for registration of a mark, except in applications for registration of sound, scent, and other non-visual marks.   See 37 C.F.R. §§2.21(a)(3), 2.52(e). See also TMEP §807.09 regarding drawings in applications for registration of non-visual marks.  Submitting a specimen showing how the mark is or may be used (e.g., the overall packaging, a photograph of the goods, or an advertisement) does not satisfy the requirement for a clear drawing of the mark.   See TMEP §202.01.

The drawing is used to reproduce the mark in the Trademark Official Gazette and on the registration certificate.

The main purpose of the drawing is to provide notice of the nature of the mark sought to be registered.  The drawing of a mark is promptly entered into the automated records of the USPTO and is available to the public through the Trademark Electronic Search System ("TESS") and the Trademark Status and Document Retrieval ("TSDR") database on the USPTO website at http://tsdr.uspto.gov/.  Timely public notification of the filing of applications is important, because granting a filing date to an application potentially establishes a date of constructive use of the mark (see TMEP §201.02).  Therefore, an application under §1 or §44 must include a clear drawing of the mark to receive a filing date.  37 C.F.R. §2.21(a)(3); TMEP §202.01.

Examining attorneys must require applicants to comply promptly with the drawing rules.  Requests to defer drawing corrections until the application is approved for publication or registration must be denied.

There are two forms of drawings:  "special form drawings" and "standard character drawings."  See 37 C.F.R. §§2.52(a), (b). See also TMEP §§807.03–807.03(i) for information about standard character drawings, and TMEP §§807.04–807.04(b) for information about special form drawings.  ( Note:  "Typed" drawings are acceptable for applications filed before November 2, 2003.   See TMEP §807.03(i).)

For special form marks, generally, the most appropriate drawing of the mark shows an illustrated rendering of the mark. However, a photograph may also be acceptable if it accurately depicts the mark and does not show additional matter that is not part of the mark. For example, a photograph of trade dress is not acceptable if it includes unnecessary background information or informational matter such as net weight or contents. Drawings consisting of either illustrated renderings or photographs of the mark are both subject to the same drawing requirements and must fairly represent the mark.

The mark in the drawing must agree with the mark as used on the specimen in an application under §1 of the Trademark Act, 15 U.S.C. §1051; as applied for or registered in a foreign country in an application under §44, 15 U.S.C. §1126; or as it appears in the international registration in an application under §66(a), 15 U.S.C. §1141f(a).  37 C.F.R. §2.51(a)–(d); TMEP §§807.12–807.12(c), 1011.01.

In a TEAS application, the drawing must be submitted electronically through TEAS, and must meet the requirements of 37 C.F.R. §§2.52  and 2.53  (see TMEP §§807.05–807.05(c)).  In a paper application, the drawing must be submitted on paper and must meet the requirements of 37 C.F.R. §§2.52  and 2.54  (see TMEP §§807.06–807.06(c)).

807.01    Drawing Must Show Only One Mark

An application must be limited to only one mark.  15 U.S.C. §1051(a)(1); 37 C.F.R. §2.52.   See In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999)

Under 37 C.F.R. §2.21(a)(3),an applicant must submit "a clear drawing of the mark" to receive a filing date.  An application that includes two or more drawings displaying materially different marks does not meet this requirement.  Two marks are considered to be materially different if the substitution of one for the other would be a material alteration of the mark, within the meaning of 37 C.F.R. §2.72  (see TMEP §§807.14–807.14(f)).

Accordingly, if an applicant submits two or more drawing pages, the application is denied a filing date, because the applicant has not met the requirement for a clear drawing of the mark.  See TMEP §202.01 for further information.   See also Humanoids Grp. v. Rogan, 375 F.3d 301, 307-309, 71 USPQ2d 1745, 1750-1751 (4th Cir. 2004).  However, if an applicant submits a separate drawing page in a paper application showing a mark, and a different mark appears in the written application, the application will receive a filing date, and the drawing page will control for purposes of determining what the mark is.  The USPTO will disregard the mark in the written application.   In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063, 1064 (Dir USPTO 2001).  Similarly, if an applicant enters a standard character mark, or attaches a digitized image of a mark, in the "Mark" field of a TEAS application, and a different mark appears in another field, the application will receive a filing date, and the mark entered in the "Mark" field will control for purposes of determining what the mark is.

The USPTO will not deny a filing date if the drawing shows spatially separate elements.  If the applicant submits an application where the "drawing" is composed of multiple elements on a separate page, multiple elements on a single digitized image, or multiple elements in a separate area of the body of the application, the applicant has met the requirement of 37 C.F.R. §2.21(a)(3)  for a clear drawing of the mark.  The examining attorney must determine whether the matter presented for registration is a single mark projecting a unitary commercial impression.  See TMEP §807.12(d) regarding "mutilation" or incomplete representation of the mark.

If the examining attorney determines that spatially separate elements constitute two or more different marks, the examining attorney must refuse registration under §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051  and 1127, on the ground that the applicant seeks registration of more than one mark.   See In re Hayes, 62 USPQ2d 1443, 1445-1446 (TTAB 2002) ; In re Elvis Presley Enters., Inc., 50 USPQ2d 1632 (TTAB 1999) ; In re Walker-Home Petroleum, Inc., 229 USPQ 773, 775-776 (TTAB 1985) ; In re Jordan Indus., Inc., 210 USPQ 158, 159-160 (TTAB 1980); In re Audi NSU Auto Union AG, 197 USPQ 649, 650-651 (TTAB 1977) ; In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974) ; In re Robertson Photo-Mechanix, Inc., 163 USPQ 298, 299 (TTAB 1969) .  This refusal may apply in any application, regardless of the filing basis.

When registration is refused because the matter presented on the drawing does not constitute a single mark, the application filing fee will not be refunded.  The applicant may amend the drawing if the amendment does not materially alter the mark, or may submit arguments that the matter on the drawing does in fact constitute a single mark.  See TMEP §§807.14–807.14(f) regarding material alteration, and TMEP §807.14(a) regarding deletion of matter from the drawing.

Under 37 C.F.R. §2.52(b)(2), even if registration is sought for a three-dimensional mark, the applicant must submit a drawing depicting a single rendition of the mark.   See TMEP §807.10.  If the applicant submits a drawing that depicts a three-dimensional mark in multiple renditions, the examining attorney will require a substitute drawing depicting the mark in a single rendition.  If the applicant believes that its mark cannot be adequately depicted in a single rendition, the applicant may file a petition under 37 C.F.R. §2.146  requesting that the rule be waived.  See TMEP Chapter 1700 regarding petitions.

If the mark is duplicated in some form on the drawing (e.g., a typed word and a stylized display of the same word), this is generally not considered to be two materially different marks, and deletion of one of the marks is permitted.

See TMEP §§1214–1214.04 regarding the refusal of registration of a mark with a "phantom" element on the ground that it includes more than one mark in a single application.

See also In re Upper Deck Co., 59 USPQ2d 1688, 1691 (TTAB 2001) (holding that a hologram used on trading cards in varying shapes, sizes, contents, and positions constitutes more than one "device" as contemplated by §45 of the Trademark Act).

807.02    Drawing Must Be Limited to Mark

The drawing allows the USPTO to properly code and index the mark for search purposes, indicates what the mark is, and provides a means for reproducing the mark in the Official Gazette and on the certificate of registration.  Therefore, matter that appears on the specimen that is not part of the mark should not be placed on the drawing.  Purely informational matter such as net weight, contents, or business addresses are generally not considered part of the mark.

Quotation marks and hyphens should not be included in the mark on a drawing, unless they are a part of the mark.  See TMEP §§807.12(a)(i)–807.14(a)(iii) and 807.14(c) regarding the role of punctuation in determining whether the mark on the drawing agrees with the mark on the specimen.  The drawing may not include extraneous matter such as the letters "TM," "SM," the copyright notice ©, or the federal registration notice ®.  See TMEP §§906–906.04 regarding use of the federal registration notice.

See TMEP §807.14(a) regarding requirements for removal of matter from the drawing.

807.03    Standard Character Drawings

Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52,was amended to replace the term "typed" drawing with "standard character" drawing.  Applicants who seek to register a mark without any claim as to the manner of display must submit a standard character drawing that complies with the requirements of 37 C.F.R. §2.52(a).

807.03(a)    Requirements for Standard Character Drawings

A standard character drawing must show the mark in black on a white background.  An applicant may submit a standard character drawing if:

• The mark does not include a design element;
• All letters and words in the mark are depicted in Latin characters;
• All numerals in the mark are depicted in Roman or Arabic numerals;
• The mark includes only common punctuation or diacritical marks; and
• No stylization of lettering and/or numbers is claimed in the mark.

37 C.F.R. §2.52(a).

If the applicant files an application on paper that includes a standard character claim, the applicant may depict the mark in any font style; may use bold or italicized letters; and may use both uppercase and lowercase letters, all uppercase letters, or all lowercase letters, since no claim is made to any particular font style, size, or color.  However, the USPTO will convert applicant’s depiction of the mark to a standardized typeface for printing in the Official Gazette and on the registration certificate.  If filing electronically via the Trademark Electronic Application System ("TEAS"), the applicant may neither depict the mark in any particular font style nor use bold or italicized letters.  TEAS will automatically convert any wording typed into the standard-character field to a standardized typeface.

Superscripts, subscripts, exponents, or other characters that are not in the USPTO’s standard character set (see TMEP §807.03(b)) are not permitted in standard character drawings.   In re AFG Indus. Inc., 17 USPQ2d 1162, 1163-64 (TTAB 1990) (holding that a special form drawing is required for a drawing featuring a raised numeral).  The degree symbol is permitted.

Underlining is not permitted in a standard character drawing.

Standard Character Claim Required.  An applicant who submits a standard character drawing must also submit the following standard character claim:

The mark consists of standard characters without claim to any particular font style, size, or color.

This statement will appear in the Official Gazette and on the certificate of registration.

807.03(b)    List of Standard Characters

The USPTO has created a standard character set that lists letters, numerals, punctuation marks, and diacritical marks that may be used in a standard character drawing.  The standard character set is available on the USPTO website at http://www.uspto.gov/teas/standardCharacterSet.html.  If the applicant has claimed standard character format and the drawing includes elements that are not in the set, then the examining attorney must treat the drawing as a special form drawing, ensure that the mark drawing code is changed, and require the applicant to delete the standard character claim.  See TMEP §807.18 concerning mark drawing codes.

In a §66(a) application, if the drawing includes elements that are not in the standard character set, the examining attorney must require deletion of the standard character claim even though the international registration indicates that the mark is in standard characters.   See the IB’s Guide to International Registration, Para. B.II.07.44.

807.03(c)    Drawings Containing Both a Standard Character Claim and Designs or Other Elements

If the application contains a standard character claim, but the mark includes a design element, color, a claim of a particular style or size of lettering, or other elements such that the mark does not meet the requirements of 37 C.F.R. §2.52(a), then the examining attorney must:  (1) treat the drawing as a special form drawing; (2) require that the applicant delete the standard character claim from the record; (3) ensure that the appropriate mark drawing code is entered into the Trademark database; and (4) if appropriate, add design search codes.  See TMEP §807.18 concerning mark drawing codes and TMEP §104 regarding design codes.

Similarly, a standard character claim is not acceptable where the characters form shapes or designs, such as emoticons.

807.03(d)    Changing From Special Form Elements to Standard Characters, or the Reverse, May be a Material Alteration  

A special form drawing containing a design element, color, a claim to a particular style or size of lettering, or other distinctive elements cannot be amended to a standard character drawing, unless the examining attorney determines that the amendment is not material.  37 C.F.R. §2.72.

Conversely, a standard character drawing cannot be amended to a special form drawing containing a design element, color, or a claim to a distinctive style or size of lettering, unless the examining attorney determines that the amendment is not material.  37 C.F.R. §2.72.  See TMEP §§807.14–807.14(f) regarding material alteration.

807.03(e)    Standard Character Drawing and Specimen of Use

When the applicant submits a standard character drawing, the mark shown in the drawing does not necessarily have to appear in the same font style, size, or color as the mark shown on the specimen of use.  However, the examining attorney must review the mark depicted on the specimen to determine whether a standard character claim is appropriate, or whether a special form drawing is required.

If the examining attorney determines that the standard characters are displayed in a distinctive manner that changes the meaning or overall commercial impression of the mark, the examining attorney must process the drawing as a special form drawing, and require the applicant to delete the standard character claim.  As with all drawings, the mark on the drawing must be a substantially exact representation of the mark used on the specimen in an application under §1 of the Trademark Act.  37 C.F.R. §§2.51(a)  and (b); TMEP §§807.12(a)–807.12(a)(iii).

The examining attorney may delete the standard character claim by examiner’s amendment after obtaining approval from the applicant or the applicant’s qualified practitioner.  When deleting a standard character claim, the examining attorney must ensure that the mark drawing code is changed.  See TMEP §807.18 concerning mark drawing codes.

See TMEP §807.04(b) for further information as to when a special form drawing is required.

807.03(f)    Standard Character Drawing and Foreign Registration

In a §44 application, if the applicant claims standard characters, the examining attorney must ensure that the foreign registration also claims standard characters.   See 37 C.F.R. §2.51(c); TMEP §807.12(b).

If the foreign registration certificate does not indicate that the mark is in standard characters (or the equivalent), the examining attorney must inquire whether the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent).  The applicant must either submit an affirmative statement that the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent), or delete the standard character claim in the United States application.  A statement that the foreign registration includes a claim that the mark is in standard characters may be entered in the record through a Note to the File if there are no other outstanding issues.

Appendix E  of this manual lists countries that register marks in standard characters or the equivalent.  For countries on this list, if all letters and words in the mark are in block capital or capital and lowercase Latin characters, all numerals are Roman or Arabic numerals, the mark includes only common punctuation or diacritical marks, and no stylization of lettering and/or numbers is claimed, the examining attorney need not inquire whether the registered mark in the foreign registration is in standard characters or the equivalent, unless the applicant has indicated that the mark is not standard characters or the equivalent.  If the applicant has indicated that the mark is not in standard characters or the equivalent, but the foreign registration is from a country on the list and the mark meets the standards set forth above, the examining attorney must inquire about the discrepancy.  In response to the inquiry, the applicant must either amend the application to claim standard characters, or confirm that the mark is not in standard characters or the equivalent.  If a particular country is not on this list, the examining attorney must inquire as to whether the mark in the foreign registration is for a mark in standard characters or the equivalent.

The examining attorney may delete the standard character claim by examiner’s amendment after obtaining approval from the applicant or applicant’s qualified practitioner.  When deleting a standard character claim, the examining attorney must ensure that the mark drawing code is changed.  See TMEP §807.18 concerning mark drawing codes.

807.03(g)    Drawings in "Typed" Format With No Standard Character Claim

Section 1 Applications.  If the application does not include a standard character claim, but the mark is shown in a format that would have been considered "typed" prior to November 2, 2003 (i.e., the mark is shown in capital letters, or the mark is specified as "typed" in the body of the application, on a separate drawing page, or on a cover letter filed with the application), the drawing will initially be coded and entered into the automated records of the USPTO as a special form drawing.  However, the examining attorney must treat the drawing of the mark as a standard character drawing and ensure that a standard character claim is entered into the record.

If the application is ready to be published for opposition, the examining attorney must enter the standard character claim by a no-call examiner’s amendment.  In this situation, no prior authorization from the applicant is required to add a claim by an examiner’s amendment.   See TMEP §707.02.  If an Office action is necessary, it must include a requirement that the applicant submit a standard character claim.

Once the applicant submits a standard character statement, the examining attorney must ensure that the mark drawing code is changed to 4 (see TMEP §807.18).

Section 44 Applications.  In a §44 application, the applicant cannot claim standard characters unless the foreign registration also claims standard characters.   See TMEP §807.03(f).

Section 66(a) Applications.  In a §66(a) application, if the application does not include a standard character claim but the mark is shown in what appears to be standard character format, see TMEP §807.03(h).

807.03(h)    Drawings Where the Format Is Unclear

Section 1 Applications.  When it is unclear from the record whether the submitted drawing was intended to be a standard character drawing, the examining attorney must contact the applicant for clarification.  For example, clarification is needed if the font style used in the mark on the drawing does not match the font style used on the specimen and there is no standard character claim in the application, or if the applicant files a paper application in which the mark is printed or written by hand.  If the mark is intended to be in standard characters, then the examining attorney must require that the applicant amend the application to include the standard character claim.  This may be done by examiner’s amendment.  Once the applicant submits this statement, the examining attorney must ensure that the mark drawing code is changed to 4 (see TMEP §807.18).

Section 44 Applications.  In a §44 application, the applicant cannot claim standard characters unless the foreign registration also claims standard characters.   See TMEP §807.03(f).

Section 66(a) Applications.  A §66(a) application will normally indicate whether there is a standard character claim in the underlying international registration. The international registration will include such a claim if the basic application and/or registration that forms the basis of the international registration also includes such a claim. However, due to differences in requirements for standard character claims in the different countries where basic applications are filed and basic registrations issued, there may be times when the mark in the international registration and corresponding U.S. §66(a) application does not include a standard character claim even though the mark appears to be in standard characters.

In such cases, the applicant may assert a standard character claim in a §66(a) application if the mark drawing complies with the USPTO’s requirements for a standard character drawing under 37 C.F.R. §2.52(a), and the mark in the basic application and/or registration that forms the basis for the international registration is the legal equivalent of a standard character mark under the laws of the country of the basic application and/or registration. Although a mark in a §66(a) application may generally not be amended, submitting a standard character claim under these circumstances is not considered an amendment of the mark. TMEP §§807.13(b), 1904.02(j), (k); see 15 U.S.C. §1141h(a); 37 C.F.R. §§2.52(a), 7.25(a).

To assert a standard character claim under these circumstances, the applicant must submit (1) an affirmative statement that, under the laws of the country of the basic application and/or registration, the basic application and/or registration includes, and thus the international registration includes, the legal equivalent of a standard character claim, and (2) a standard character claim (i.e., The mark consists of standard characters without claim to any particular font style, size, or color.) (see TMEP §807.03(a)). If the basic application and/or registration does not indicate that the mark is in standard characters (or the legal equivalent), the mark in the international registration and the corresponding drawing in the §66(a) application will be considered in special form and any U.S. registration that issues will be limited to the particular appearance and text style shown in the drawing.

If an Office action is otherwise necessary, an examining attorney may provide an advisory to the §66(a) applicant that the drawing of the mark meets the requirements for a standard character drawing under 37 C.F.R. §2.52(a), but there is no standard character claim in the U.S. application. This advisory should include an explanation that a standard character claim may be added to the U.S. application if, under the laws of the country of the basic application and/or registration, the basic application and/or registration includes the legal equivalent of a standard character claim.

The applicant may not add a standard character claim unless the mark in the §66(a) application meets the U. S. requirements for a standard character drawing in 37 C.F.R. §2.52(a)  (see TMEP §§807.03(a), (b)).

Alternatively, if the international registration indicates that the mark is in standard characters, but the drawing includes elements that are not in the USPTO's standard character set (see TMEP §807.03(b), the examining attorney must require deletion of the standard character claim even though the international registration indicates that the mark is in standard characters.   See the IB’s Guide to International Registration, Para. B.II.07.44.

The Guide to International Registration provides that if an Office "considers that the mark is not in standard characters, it may issue a refusal, for example, on the ground that the international registration covers two marks (one in standard characters and one in special characters) or that it is simply not clear for what [mark] protection is sought."  Para. B.II.07.45.  See TMEP §807.01 regarding multiple marks and §§1214–1214.04 regarding phantom marks.

807.03(i)    Typed Drawings

Prior to November 2, 2003, "standard character" drawings were known as "typed" drawings.  The mark on a typed drawing had to be typed entirely in capital letters.  A typed mark is the legal equivalent of a standard character mark.

807.04    Special Form Drawings

807.04(a)    Characteristics of Special Form Drawings

A "special form drawing" is a drawing that presents a mark comprised, in whole or in part, of special characteristics such as elements of design or color, style(s) of lettering, or unusual form(s) of punctuation.

All special form drawings must be of a quality that will reproduce satisfactorily for scanning into the Trademark database.  If the drawing is not of a quality that will reproduce satisfactorily for scanning and printing in the Official Gazette and on the certificate of registration, the examining attorney must require a new drawing.  If there is any doubt as to whether the drawing is acceptable, the examining attorney should contact the Office of Trademark Quality Review.

Pasted material, taped material, and correction fluid are not acceptable because they do not reproduce satisfactorily.

See TMEP §807.18 concerning mark drawing codes.

807.04(b)    When Special Form Drawing Is Required

A special form drawing is required if words, letters, or numerals are presented in a distinctive form that engenders an uncommon or "special" commercial impression that would be altered or lost were registration to issue based on a standard character drawing.   In re Morton Norwich Prods., Inc., 221 USPQ 1023, 1023 (TTAB 1983) (holding LABID not registrable without a special form drawing because the specimen showed the letter "a" in smaller lettering with a diacritical accent that set off the "BID" portion of the mark, when the word "BID" had an accepted meaning as applied to drug prescriptions, i.e., "twice a day"); see In re United Servs. Life Ins. Co., 181 USPQ 655, 656 (TTAB 1973) (holding FOR LIFE INSURANCE SEE US not registrable without a special form drawing because the specimen showed the "US" portion of the mark in significantly larger lettering and underlined, suggesting a double entendre because "US" could stand for applicant’s name "United Services" or for the pronoun "us"); In re Dartmouth Mktg. Co., 154 USPQ 557, 558 (TTAB 1967) (finding LUNCHEON TIME presented "in an uncommon manner to the extent that a prospective purchaser’s initial impression of the mark might well be other than that which applicant may intend to convey by the well understood term ‘luncheon time’").

A special form drawing is required for marks that contain superscripts, subscripts, exponents, or other characters that are not in the USPTO’s standard character set.   In re AFG Indus. Inc., 17 USPQ2d 1162, 1164 (TTAB 1990) (requiring special form drawing for raised numeral).  See TMEP §807.03(b) regarding the USPTO’s standard character set.

The USPTO encourages the use of standard character drawings.  As a general rule, an applicant may submit a standard character drawing when a word, letter, numeral, or combination thereof creates a distinct commercial impression apart from any stylization or design element appearing on the specimen.  If a mark remains the same in essence and is recognizable regardless of the form or manner of display that is presented, displaying the mark in standard character format affords a quick and efficient way of showing the essence of the mark.   In re wTe Corp., 87 USPQ2d 1536, 1539-40 (TTAB 2008) (reversing refusal on the ground that the standard character mark on the drawing was not a substantially exact representation of the mark as actually used, finding that SPECTRAMET creates a distinct commercial impression apart from any stylization or design element appearing on the specimens, on which the letter "C" was displayed with an arrow design); see In re Oroweat Baking Co., 171 USPQ 168 (TTAB 1971) (holding requirement for special form drawing to register OROWEAT displayed with wheat designs in the letter "O" improper); In re Elec. Reps. Ass’n, 150 USPQ 476 (TTAB 1966) (finding special form drawing not required when acronym ERA makes an impression apart from the electron design).

When an application is for a mark in standard characters, the examining attorney must consider the manner in which the mark is used on the specimen, and decide whether the mark includes an essential element or feature that cannot be produced by the use of standard characters.  See TMEP §§807.12(a)–807.12(a)(iii) regarding agreement between the mark on the drawing and the mark used on the specimen.

If the examining attorney determines that the mark in a standard character drawing should have been presented in special form, the applicant may submit a special form drawing if the amendment would not result in a material alteration of the mark.   See 37 C.F.R. §2.72; TMEP §§807.14–807.14(f). If a standard character drawing is amended to a special form drawing, the examining attorney must ensure that the mark drawing code is changed.  See TMEP §807.18 concerning mark drawing codes.

807.05    Electronically Submitted Drawings

The drawing in a TEAS application must meet the requirements of 37 C.F.R. §§2.52–2.53.

The USPTO has waived the requirement of 37 C.F.R. §2.53(c)  that drawings have a length and width of no less than 250 pixels and no more than 944 pixels.   See 69 Fed. Reg. 59809  (Oct. 6, 2004).  However, applicants are encouraged to continue to submit drawings with a length and width of no less than 250 pixels and no more than 944 pixels.

807.05(a)    Standard Character Drawings Submitted Electronically

If an applicant is filing a standard character drawing, the applicant must enter the mark in the appropriate data field.  The applicant must also submit a standard character claim, which is automatically generated once the applicant selects the standard character option.   See 37 C.F.R. §2.52(a)(1).

When an application for a standard character mark is filed through TEAS, the characters entered in the appropriate data field in the TEAS application or TEAS response form are automatically checked against the USPTO’s standard character set.  See TMEP §807.03(b) regarding the standard character set.

If all the characters in the mark are in the standard character set, the USPTO will create a digitized image that meets the requirements of 37 C.F.R. §2.53(c), and automatically generate the standard character statement.  The application record will indicate that standard characters have been claimed and that the USPTO has created the image.  The examining attorney need not check the standard character mark against the standard character set during examination.

807.05(a)(i)    Long Marks in Standard Character Drawings

As noted in TMEP §807.05(a), when an applicant files an application for a standard character mark through TEAS, the applicant must enter the mark in the appropriate data field.

A single line can consist of no more than 26 characters, including spaces.  If the applicant enters a mark that exceeds 26 characters into the standard character word mark field, the USPTO’s automated system will break the mark, so that it fits into the Official Gazette.  After 26 characters, the mark will automatically continue onto the next line.  The online TEAS instructions provide further information about breaks in long standard character marks.  If a standard character mark exceeds 26 characters, and the applicant has a preference as to where the mark will be broken, the applicant should use the special form option, and attach a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c)  to the "Mark" field on the electronic application.  See TMEP §807.05(c) regarding the requirements for digitized images.  If the applicant selects the special form option, the applicant may not include a standard character claim.

807.05(b)    Special Form Drawings Submitted Electronically

If the mark is in special form, the applicant must attach a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c)  to the "Mark" field on the electronic application.  See TMEP §807.05(c) regarding the requirements for digitized images.

807.05(c)    Requirements for Digitized Images

The mark image must be in .jpg format, and should be scanned at no less than 300 dots per inch and no more than 350 dots per inch, to produce the highest quality image.  All lines must be clean, sharp, and solid, must not be fine or crowded, and must produce a high-quality image.  37 C.F.R §2.53(c).  It is recommended that mark images have a length of no less than 250 pixels and no more than 944 pixels, and a width of no less than 250 pixels and no more than 944 pixels.

Mark images should have little or no white space appearing around the design of the mark.  If scanning from a paper image of the mark, it may be necessary to cut out the mark and scan it with little or no surrounding white space.  Failure to do this may cause the mark to appear very small in the USPTO’s automated records, such that it may be difficult to recognize all words or design features of the mark.  To ensure that there is a clear image of the mark in the automated records of the USPTO, examining attorneys and LIEs should view the mark on the Publication Review program available on the USPTO’s internal computer network.  If the mark is not clear, the examining attorney must require a new drawing that meets the requirements of 37 C.F.R. §§2.52–2.54.

When color is not claimed as a feature of the mark, the image must be depicted only in black and white.  When scanning an image, the applicant should confirm that the settings on the scanner are set to create a black-and-white image file, not a color image file.

Mark images may not include extraneous matter such as the symbols TM or SM, or the registration notice ®.  The image should be limited to the mark.   See TMEP §807.02.

807.06    Paper Drawings

Paper drawings may be filed by mail or hand delivery.  Drawings may notbe submitted by facsimile transmission.  37 C.F.R. §2.195(d)(2).

The drawing must meet the requirements of 37 C.F.R. §§2.52, 2.54.

807.06(a)    Type of Paper and Size of Mark

Size of Mark.  The mark on the drawing should be no larger than 3.15 inches high by 3.15 inches wide (8 cm high by 8 cm wide).  37 C.F.R. §2.54(b).

The USPTO will create a digitized image of all drawings submitted on paper.  The examining attorney must view the mark on the Publication Review program, available on the USPTO’s internal computer network.  If the display of the mark appears to be clear and accurate, the examining attorney will presume that the drawing meets the size requirements of the rule.

Type of Paper and Recommended Format.  The drawing should:

• Be on non-shiny white paper that is separate from the application;
• Be on paper that is 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long.  One of the shorter sides of the sheet should be regarded as its top edge;
• Include the caption "DRAWING PAGE" at the top of the drawing beginning one inch (2.5 cm.) from the top edge; and
• Depict the mark in black ink, or in color if color is claimed as a feature of the mark.

37 C.F.R. §2.54(a)–(d).

The drawing must be typed or made with ink or by a process that will provide high definition when scanned.  A photolithographic, printer’s proof copy, or other high-quality reproduction of the mark may be used.  All lines must be clean, sharp, and solid, and must not be fine or crowded.  37 C.F.R. §2.54(e).

807.06(b)    Long Marks in Standard Character Drawings

Because all standard character drawings are stored in USPTO systems as an image, a standard character drawing must meet the 3.15 inch (8 cm) by 3.15 inch (8 cm) requirement of 37 C.F.R. §2.54(b).  If the mark is too long to meet this requirement, applicant must submit an image on which the mark is broken in an appropriate place.  It is suggested that the applicant use 14-point type to ensure that the mark will be legible in the Official Gazette and on the certificate of registration.

If an applicant submits an image on which the mark exceeds the size requirements of 37 C.F.R. §2.54(b), the USPTO will reduce the image so that it will meet these requirements.   See TMEP §807.06(a).  This could cause the mark to appear very small.  To ensure that the mark will be legible in the Official Gazetteand on the certificate of registration, the examining attorney should view the mark on the Publication Review program available on the USPTO’s internal computer network.  If the mark is not legible, the examining attorney must require a new drawing that meets the requirements of 37 C.F.R. §§2.52–2.54.

807.06(c)    Separate Drawing Page Preferred

The USPTO recommends that an applicant submit a drawing of the mark on a separate page from the written application.  37 C.F.R. §2.54(a).  However, a separate drawing page is not mandatory.  Instead of a drawing page, an applicant may include a drawing of the mark embedded in the application, in either the heading or the body of the application.

If the applicant identifies a separate page as a drawing (e.g., by labeling it as a drawing, or providing a heading with the applicant’s name, address and the subject goods/services), this will be the only drawing considered.

A mark depicted on the specimen, in the foreign registration, or in the international registration will not be considered a drawing.

If there is no separate drawing page, the examining attorney must review the application to determine what the mark is.  If an embedded drawing meets the requirements of 37 C.F.R. §§2.51–2.52, 2.54, the examining attorney should accept it and not require a substitute drawing.

Effective October 30, 1999, a separate drawing page is considered part of the written application, not a separate element.  Dates of use, disclaimers, descriptions of the mark, identifications of goods/services, and other information that appears on the drawing are also considered part of the written application.  This applies to substitute drawings as well as original drawings.  If there is an inconsistency between the information on the drawing page and the information in the body of the application, the examining attorney must require clarification.

If an applicant submits a separate drawing page showing a mark, and a different mark appears in the written application, the drawing page controls for purposes of determining what the mark is.   See TMEP §807.01.

807.07    Color in the Mark

If the applicant wishes to register the mark in color, the applicant must submit a color drawing and meet the requirements of 37 C.F.R. §2.52(b)(1).  See TMEP §§807.07(a)–807.07(g) regarding the requirements for color drawings.  If the applicant does not claim color as a feature of the mark, the applicant must submit a black-and-white drawing.

Generally, if the applicant has not made a color claim, the description of the mark should not mention color(s), because reference to color in the description of a non-color mark creates a misleading impression.   TMEP §808.02.  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.  This occurs where the black, white, and/or gray is used as a means to indicate areas that are not part of the mark, such as background or transparent areas; to depict a certain aspect of the mark that is not a feature of the mark, such as broken- or dotted-line outlining to show placement of the mark; to represent shading or stippling; or to depict depth or three-dimensional shape.  See TMEP §§807.07(f)–807.07(f)(ii) regarding applications with black-and-white drawings and mark descriptions that refer to black, white, or gray with no corresponding color claim, TMEP §§807.07(d)–807.07(d)(iii) regarding color drawings that contain black, white, or gray, and TMEP §807.07(e) regarding black-and-white drawings and color claims.

See TMEP §§1202.05–1202.05(i) regarding the registration of marks that consist solely of one or more colors used on particular objects.

807.07(a)    Requirements for Color Drawings

For applications filed on or after November 2, 2003, the USPTO does not accept black-and-white drawings with a color claim, or drawings that show color by use of lining patterns.   See 37 C.F.R. §2.52(b)(1).

If the mark includes color, the drawing must show the mark in color.  In addition, the application must include:  (1) a claim that the color(s) is/are a feature of the mark; and (2) a color location statement in the "Description of the Mark" field naming the color(s) and describing where the color(s) appear(s) on the mark.  37 C.F.R. §2.52(b)(1).  A color drawing will not publish without both of these statements.  See TMEP §807.07(a)(i) regarding the color claim, and TMEP §807.07(a)(ii) regarding the color location statement.

807.07(a)(i)    Color Must Be Claimed as a Feature of the Mark

If an applicant submits a color drawing, or a description of the mark that indicates the use of color on the mark, the applicant must claim color as a feature of the mark.  37 C.F.R. §2.52(b)(1). If the color claim is incorrect, incomplete, or inconsistent with the color(s) shown on the drawing, the color claim must be corrected to conform to the color(s) depicted on the drawing. If the color claim or mark description references changeable colors, the examining attorney must require an amended mark description that deletes the reference to the color in the mark varying or being changeable and restricts the description to only those colors shown on the drawing. See TMEP §807.01. Alternatively, the applicant may amend to a black-and-white drawing, if the amendment would not constitute a material alteration.  A properly worded color claim would read as follows:

The color(s) <name the color(s)> is/are claimed as a feature of the mark.

The color claim must include the generic name of the color(s) claimed.  It is usually not necessary to indicate shades of a color, but the examining attorney has the discretion to require that the applicant do so, if necessary to accurately describe the mark. The color claim may also include a reference to a commercial color identification system.  The USPTO does not endorse or recommend any one commercial color identification system.

In an application filed on or after November 2, 2003, an applicant cannot file a color drawing with a statement that "no claim is made to color" or "color is not a feature of the mark."  If this occurs, the examining attorney must require the applicant to claim color as a feature of the mark.  The applicant may not substitute a black-and-white drawing, unless the examining attorney determines that color is non-material.

807.07(a)(ii)    Applicant Must Specify the Location of the Colors Claimed

If an applicant submits a color drawing, in addition to claiming the color(s), the applicant must include a separate statement specifying where the color(s) appear(s) on the mark.  37 C.F.R. §2.52(b)(1).  This statement is often referred to as a "color location statement."  In a TEAS application, the color location statement should be set forth in the "Description of the Mark" field.  A properly worded color location statement would read as follows:

The mark consists of <specify the color(s) and literal or design element(s) on which the color(s) appear, e.g., a red bird sitting on a green leaf>.

If the color location statement is incorrect, incomplete, or inconsistent with the color(s) shown on the drawing, the color location statement must be corrected to conform to the color(s) depicted on the drawing.  If the statement references changeable colors, the examining attorney must require an amended mark description that deletes the reference to the color in the mark varying or being changeable and restricts the description to only those colors shown on the drawing. See TMEP §807.01. However, if the record contains an accurate and properly worded color claim listing all the colors, and an informal description of where the colors appear, but one of the colors is omitted from the formal description of the colors in the mark, the examining attorney may enter an amendment of the color description that accurately reflects the location of all colors in the mark without prior approval by the applicant or the applicant’s qualified practitioner.   See TMEP §707.02.

The color location statement must include the generic name of the color claimed. The statement may also include a reference to a commercial color identification system.  The USPTO does not endorse or recommend any one commercial color identification system.

It is usually not necessary to indicate shades of a color, but the examining attorney has the discretion to require that the applicant indicate shades of a color, if necessary to accurately describe the mark.

See TMEP §1202.05(e) for additional information regarding the requirement for a written explanation of a mark consisting solely of color.

807.07(b)    Color Drawings Filed Without a Color Claim

If the applicant submits a color drawing but does not include a color claim in the written application, and if the color is a material element of the mark, the examining attorney must require the applicant to submit a claim that color(s) is/are a feature of the mark, and a separate color location statement in the "Description of the Mark" field naming the color(s) and specifying where the color(s) appear(s) on the mark. 37 C.F.R §2.52(b)(1); TMEP §§807.07(a)–807.07(a)(ii).

In an application under §1, if the examining attorney determines that color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing.

In an application under §44, the drawing of the mark must be a substantially exact representation of the mark in the foreign registration.  37 C.F.R. §2.51(c); TMEP §807.12(b).  If a §44 application is based on a foreign registration that depicts the mark in color, but no claim of color is made in the registration document, the examining attorney must inquire whether the foreign registration includes the color(s) shown as claimed features of the mark.  The applicant must either:  (1) submit an affirmative statement that color is a feature of the mark, and comply with the United States requirements for drawings in color; or (2) submit a statement that although the mark is registered in its country of origin featuring a color depiction of the mark, no claim of color is made in that registration.  If the examining attorney determines that color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing.   See TMEP §§807.12(b), 1011.01, 1011.03.

In an application under §66(a), the drawing of the mark must be a substantially exact representation of the mark as it appears in the international registration.  37 C.F.R. §2.51(d); TMEP §807.12(c).  The IB will include a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States.  The mark in a §66(a) application cannot be amended.   TMEP §807.13(b).   

Generally, when a mark is depicted in color, the §66(a) application will contain a claim of the colors featured in the mark.  However, because some countries accept color drawings of marks that do not include a color claim, there may be cases where no claim of color has been made in the international registration, but the reproduction of the mark contains color.  In these cases, the examining attorney should require the applicant to submit either:  (1) a claim of the color(s) featured in the mark and a separate statement in the "Description of the Mark" field describing where the color(s) appear(s) in the mark; or (2) a statement that no claim of color is made with respect to the international registration, and a black-and-white reproduction of the same mark depicted in the international registration to comply with United States drawing requirements.   See 37 C.F.R. §2.52(b).

807.07(c)    Color Drawings Filed With an Incorrect Color Claim

When the color shown on the drawing page in a paper application, or on the digitized image of the drawing in a TEAS application, is inconsistent with the color claimed in the written application (e.g., the mark is shown in blue on the drawing, but the color claimed is orange), the drawing controls.  The color claim may be corrected to conform to the drawing.  The drawing may not be corrected to conform to the color claim, unless the examining attorney determines that the amendment is non-material.

807.07(d)    Color Drawings that Contain Black, White, or Gray

When color is claimed as a feature of the mark, the applicant must submit a color claim that identifies each color and a separate color location statement describing where each color appears in the mark.  37 C.F.R §2.52(b)(1); TMEP §§807.07(a)–807.07(a)(ii).  The applicant must claim all colors shown in the mark; the applicant cannot claim color for some elements of the mark and not others.   See id.  For example, when the drawing includes solid black lettering as well as elements in other colors, the applicant must claim the color black as a feature of the mark and include reference to the black lettering in the color location statement.  The applicant may not state that solid black lettering represents all colors, or that it represents the particular color of the label, product, packaging, advertisement, website, or other specimen on which the mark appears at any given time.

If color is claimed as a feature of the mark, the drawing may include black, white, and/or gray used in two ways:  (1) as claimed features of the mark; and/or (2) as a means to depict a certain aspect of the mark that is not a feature of the mark, such as broken- or dotted-line outlining to show placement of the mark on a product or package; to represent shading or stippling; to depict depth or three-dimensional shape; or to indicate areas that are not part of the mark, such as background or transparent areas.   See TMEP §§807.08, 808.01(b).

The terms "background" and "transparent areas" refer to the white or black portions of the drawing which are not part of the mark, but appear or will appear in the particular color of the label, product, packaging, advertisement, website, or other acceptable specimen on which the mark is or will be displayed.  The applicant may not claim that the background or transparent areas represent all colors or that they represent the particular color of the label, product, packaging, advertisement, website, or other specimen on which the mark appears at any given time.

If the applicant claims color as a feature of the mark, the examining attorney must require the applicant to:

• state that the color(s) black, white, and/or gray (and all other colors in the drawing) are claimed as a feature of the mark, and describe where the color(s) appear(s) on the mark; or
• if appropriate, state that the black, white, and/or gray in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark.

These statement(s) may be submitted in either a written amendment to the application or by an examiner's amendment.  The examining attorney must ensure that the statement(s) is entered into the Trademark database.  The statement(s) will be printed on the registration certificate.

The only exception to the requirement to claim or explain any black, white, and/or gray shown on the drawing is that, if the background of the drawing is white and it is clear that the white background is not part of the mark, no explanation of the white background is required.  For example, if the drawing depicts the letters "ABC" in solid blue on a white background, or depicts a solid purple and green flower on a white background, no statement about the white background is required.  On the other hand, if the shape of each of the letters "ABC" is outlined in blue with an enclosed white interior, or if the purple and green flower is enclosed in a green or black rectangle, square, or circle with a white interior, the applicant must explain the purpose of the interior white areas on the drawing.

807.07(d)(i)    Applications Under §1

If the drawing includes black, white, gray tones, gray shading, and/or gray stippling, and also includes other colors (e.g., red, turquoise, and beige), and the color claim does not include the black/white/gray, the examining attorney must require the applicant to either:  (1) add the black/white/gray to the color claim and to the color location statement; or (2) if appropriate, add a statement that "The <black/white/gray> in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark."  

Drawing must match the specimen of use.  The drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods/services, as shown by the specimen.  37 C.F.R. §2.51(a)–(b); see 37 C.F.R. §2.72(a)(1), (b)(1); TMEP §§807.12(a)–807.12(a)(iii).

For example, if the drawing shows a red flower and the letters XYZ in the color black, the specimen must show the mark in the same colors.  If the specimen depicts the lettering in a color other than solid black (e.g., green), the applicant must:  (1) submit an amended drawing that depicts the lettering in the color shown on the specimen, if the amendment would not materially alter the mark; and (2) amend the color claim and the color location statement to match the new drawing, e.g., replace the word "black" with the word "green."  Alternatively, the applicant may submit a substitute specimen showing use of the mark in the colors depicted on the drawing, or, if deleting the colors from the drawing would not materially alter the mark, the applicant may delete the color claim and substitute a black-and-white drawing for the color drawing.  37 C.F.R. §2.72.  

807.07(d)(ii)    Applications Under §44

If the applicant claims any color as a feature of the mark in the foreign registration, the applicant must claim the same color(s) in the United States application.  If the foreign registration includes a color claim and also includes black, white, and/or gray that is not claimed as a feature of the mark, the applicant must state that the black/white/gray in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark.   See 37 C.F.R. §§2.51(c), 2.72(c)(1); TMEP §§807.12(b), 1011.01.

In applications under §44, the drawing of the mark, including any color claim, must match the mark in the foreign registration.   See 37 C.F.R. §2.51(c).  An applicant under §44 who is claiming color in the United States application must state for the record that the foreign registration includes a claim of color, unless the foreign registration clearly indicates that color is a feature of the registered mark.  The statement that the foreign registration includes a claim of color will not be printed on the United States registration certificate.

807.07(d)(iii)    Applications Under §66(a)

If the applicant claims color as a feature of the mark, and the drawing also includes black, white, and/or gray that is not mentioned in the international registration color claim, the applicant must either:  (1) claim the black/white/gray as color(s) in the United States application and describe the location of the black/white/gray; or (2) state that the black/white/gray on the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark.    

807.07(e)    Black-and-White Drawings and Color Claims

If an applicant submits a black-and-white drawing that is lined for color (see TMEP §808.01(b)), or if the applicant submits a black-and-white drawing with an application that includes a color claim, the examining attorney must require the applicant to submit a color drawing, a claim that color(s) is a feature of the mark, and a separate statement naming the color(s) and describing where the color(s) appears on the mark.   See TMEP §§807.07(a)–807.07(a)(ii). If, however, the examining attorney determines that the color is a non-material element of the drawing, the applicant may instead be given the option of submitting a black-and-white drawing that is not lined for color, or deleting the color claim in the written application, whichever is applicable.  

If an applicant submits a black-and-white drawing that is not lined for color, and there is no color claim in the written application, generally the applicant cannot substitute a color drawing and claim color, unless the examining attorney determines that the color is a non-material element of the drawing.

807.07(f)    Black-and-White Drawings that Contain Gray or Black-and-White Drawings with a Mark Description that Refers to Black, White, or Gray

807.07(f)(i)    TEAS, TEAS RF, TEAS Plus, and §66(a) Applications

If the applicant submits a black-and-white drawing that contains gray or stippling that produces gray tones, and the application states that color is not claimed as a feature of the mark, no further inquiry is required.  Similarly, if an applicant submits a black-and-white drawing and a description of the mark that references black, white, and/or gray, and the applicant states that color is not claimed as a feature of the mark, no further inquiry is required and no change to the description of the mark is required.

The word "No" in the "Color Mark" field on a TEAS, TEAS RF, or TEAS Plus application, or in the "Mark in Color" field on a §66(a) application, is sufficient to indicate that color is not claimed as a feature of the mark, even if the application contains the notation "grayscale" in reference to the drawing.

When a mark contains stippling, it is generally not necessary to require a statement that the 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 §808.01(b) regarding stippling statements.

807.07(f)(ii)    Applications Filed on Paper

If the applicant submits a black-and-white drawing on paper and the application is silent about whether color is claimed as a feature of the mark, the presence of any gray in the drawing creates an ambiguity as to whether black, white, and/or gray are claimed as a feature of the mark.  Similarly, if an applicant submits a black-and-white drawing on paper and the application is silent about whether color is claimed as a feature of the mark, the inclusion of a description of the mark that refers to black/white/gray creates an ambiguity as to whether black/white/gray is claimed as a feature of the mark.  In these cases, the examining attorney must require that the applicant submit one of the following:

• (1) A statement that the mark is not in color.  The applicant may submit the statement, or the examining attorney may obtain the information in a telephone interview or e-mail exchange with the applicant or the applicant’s qualified practitioner, and enter a Note to the File in the record that the mark is not in color; or
• (2) A statement that the color(s) black, white, and/or gray is a feature of the mark, and a separate statement naming the color(s) and describing where the color(s) appear(s) on the mark.

807.07(g)    Drawings in Applications Filed Before November 2, 2003

Prior to November 2, 2003, the USPTO did not accept color drawings.  An applicant who wanted to show color in a mark was required to submit a black-and-white drawing, with a statement describing the color(s) and where they appeared on the mark.  Alternatively, the applicant could use a color lining system that previously appeared in 37 C.F.R. §2.52  but was deleted from the rule effective October 30, 1999.   See 64 Fed. Reg. 48900, 48903 (Sept. 8, 1999) and 1226 TMOG 103, 106 (Sept. 28, 1999).

In applications filed prior to November 2, 2003, it was presumed that color was claimed as a feature of the mark, unless the applicant specifically stated that no claim was made to color, or that color was not claimed as a feature of the mark.

For applications filed before November 2, 2003, unless the application included a statement that color was not claimed as a feature of the mark (or that no claim was made to color), the applicant may voluntarily submit a color drawing under the current rules, with the requisite color claim and a separate description of the color(s) in the mark.

A registrant may substitute a color drawing for a black-and-white drawing in a registration where color is claimed, by filing a §7 request to amend the registration certificate.  The request must include:  (1) a color drawing; (2) a color claim; (3) a description of where the color(s) appear(s) in the mark; and (4) the fee required by 37 C.F.R. §2.6.   See TMEP §1609.02(e).

807.08    Broken Lines to Show Placement

Occasionally, the position of the mark on the goods, packaging, or a label may be a feature of the mark.  If necessary to adequately depict the commercial impression of the mark, the examining attorney may require the applicant to submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken- or dotted-line representation of the particular goods, packaging, or advertising on which the mark appears.  The applicant must also use broken or dotted lines to show any other matter not claimed as part of the mark.  For any drawing using broken or dotted lines to indicate placement of the mark, or matter not claimed as part of the mark, the applicant must include a written description of the mark and explain the purpose of the broken or dotted lines, for example, by indicating that the matter shown by the broken or dotted lines is not a part of the mark and that it serves only to show the position of the mark.  37 C.F.R. §2.52(b)(4).

The drawing should clearly define the matter the applicant claims as its mark.   See In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980) ; In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983).

See TMEP §1202.02(c)(i) regarding drawings of three-dimensional trade dress marks.

Because the matter depicted in broken or dotted lines is not part of the mark, it should not be considered in determining likelihood of confusion.   In re Homeland Vinyl Prods, Inc., 81 USPQ2d 1378 (TTAB 2006).  See TMEP §1202.02(c)(i) regarding drawings in trade dress applications.

807.09    "Drawing" of Sound, Scent, or Non-Visual Mark

The applicant is not required to submit a drawing if the mark consists solely of a sound (e.g., music or words and music), a scent, or other completely non-visual matter.  In a paper application, the applicant should clearly indicate in the application that the mark is a "NON-VISUAL MARK." If the applicant is submitting a TEAS application for a sound mark, the applicant should select "Sound Mark" as the mark type. If the applicant is submitting a TEAS application for a scent mark, the applicant should indicate that the mark type is "Standard Character" and should type "Scent Mark" in the "Standard Character" field.  The USPTO will enter the proper mark drawing code when the application is processed.  Non-visual marks are coded under mark drawing code 6 in the automated search system. See TMEP §807.18 regarding mark drawing codes.

If the applicant selects "Sound Mark" as the mark type in a TEAS application, the applicant will be required to indicate whether it is attaching an audio file. The applicant should submit an audio reproduction of any sound mark. See 37 C.F.R. §2.61(b). The purpose of this reproduction is to supplement and clarify the description of the mark. The reproduction should contain only the mark itself; it is not meant to be a specimen. The reproduction must be in an electronic file in .wav, .wmv, .wma, .mp3, .mpg, or .avi format and should not exceed 5 MB in size because TEAS cannot accommodate larger files.

For paper filings, reproductions of sound marks must be submitted on compact discs ("CDs"), digital video discs ("DVDs"), videotapes, or audiotapes.   See id. The applicant should clearly and explicitly indicate that the reproduction of the mark contained on the disc or tape is meant to supplement the mark description and that it should be placed in the paper file jacket and not be discarded.

If the mark is a composite comprising both visual and non-visual matter, the applicant must submit a drawing depicting the visual matter, and include a description of the non-visual matter in the "Description of the Mark" field.

The applicant must also submit a detailed description of the mark for all non-visual marks.  37 C.F.R. §2.52(e).  If the mark comprises music or words set to music, the applicant should generally submit the musical score sheet music to supplement or clarify the description of the mark.   See 37 C.F.R. §2.61(b).  In a TEAS application or response, the musical score sheet music should be attached as a .jpg or .pdf file in the "Additional Statements" section of the form, under "Miscellaneous Statements."

See TMEP §§904.03(f) and 1202.15 regarding specimens for sound marks, and TMEP §904.03(m) regarding specimens for scent and flavor marks.

807.10    Three-Dimensional Marks  

If the mark is three-dimensional, the drawing should present a single rendition of the mark in three dimensions.   See In re Schaefer Marine, Inc., 223 USPQ 170, 171 n.1 (TTAB 1984).  The applicant must include a description of the mark indicating that the mark is three-dimensional.

Under 37 C.F.R. §2.52(b)(2), the applicant is required to submit a drawing that depicts a single rendition of the mark.   See TMEP §1202.02(c)(iv). If the applicant believes that its mark cannot be adequately depicted in a single rendition, the applicant may file a petition under 37 C.F.R. §2.146  requesting that the rule be waived.  See TMEP Chapter 1700 regarding petitions, and TMEP §1202.02(c)(ii) regarding information required in descriptions for trade dress marks comprising product design or product packaging, or trade dress for services.

807.11    Marks With Motion

If the mark includes motion (i.e., a repetitive motion of short duration) as a feature, the applicant may submit a drawing that depicts a single point in the movement, or the applicant may submit a square drawing that contains up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark.  The applicant must also submit a detailed written description of the mark.  37 C.F.R. §2.52(b)(3).

See TMEP §904.03(l) regarding specimens for motion marks.

807.12    Mark on Drawing Must Agree with Mark on Specimen or Foreign Registration

807.12(a)    Applications Under §1 of the Trademark Act

For applications under §1 of the Trademark Act, the drawing must always be compared to the specimen of record to determine whether they match.   See 37 C.F.R. §2.51(a–(b).  The first step is to analyze whether the mark in the drawing is a substantially exact representation of the mark shown on the specimen.

In an application filed under §1(a) of the Trademark Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods/services, as shown by the specimen.  37 C.F.R. §2.51(a); see 37 C.F.R. §2.72(a)(1).

In an application filed under §1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods/services andas actually used, as shown by the specimen filed with the amendment to allege use or statement of use.  37 C.F.R. §2.51(b); see 37 C.F.R. §2.72(b)(1).

If the mark in the drawing is not a substantially exact representation of the mark shown in the specimen, the second step is to determine whether an amendment of the drawing to agree with the mark shown on the specimen would be a material alteration of the mark in the original drawing.  If the answer is "no," the applicant must submit either an amended drawing or a substitute specimen.  If the answer is "yes," the applicant must submit a substitute specimen and no amendment of the drawing is allowed.   See 37 C.F.R. §2.72(a)–(b). See TMEP §§807.14–807.14(f) for information about material alteration.

Extraneous matter shown on the specimen that is not part of the mark (e.g., the symbols "TM" or "SM," the registration notice ®, the copyright notice ©, or informational matter such as net weight or contents) may not be shown on the drawing.  See TMEP §807.14(a) regarding deletion of non-distinctive matter.

See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a mark with a "phantom" or changeable element, and TMEP §1215.02(c) regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a domain name mark.

807.12(a)(i)    Role of Punctuation in Determining Whether Mark on Drawing Agrees with Mark on Specimen

In assessing discrepancies in punctuation between the mark on the drawing and the mark shown on the specimen, the general rules are that:

• (1)   Extraneous, non-distinctive punctuation that appears on the specimen may be omitted from the mark on the drawing, because an acceptable specimen may contain additional matter used with the mark on the drawing, so long as the mark on the drawing makes a separate and distinct commercial impression apart from the other matter.  See TMEP §807.12(d) and cases cited therein regarding "mutilation" of the mark.
• (2)   Punctuation in the mark on the drawing must also appear on the specimen because a mark sought to be registered under §1 must be "used in commerce," and if the punctuation on the drawing does not appear on the specimen, the mark on the drawing is not used in commerce.

See TMEP §1215.08(c) regarding the addition or deletion of a "." in marks for domain name registry or registration services.

807.12(a)(ii)    Punctuation on the Drawing but Not on the Specimen

If a drawing contains punctuation, the elements of punctuation are presumed to be part of the mark.  Thus, if there is punctuation in the mark on the drawing, the punctuation must also appear on the specimen or the drawing is not considered to be a substantially exact representation of the mark as used in commerce.  If deletion of the punctuation from the drawing does not alter the commercial impression, the drawing may be amended to match the specimen.  If deletion of the punctuation changes the commercial impression, i.e., constitutes a material alteration, the applicant must submit a substitute specimen to match the original drawing.    See TMEP §§807.14–807.14(f) regarding material alteration.

For example, if the mark on the drawing is "ALL THE KING’S MEN," and the mark on the specimen is ALL THE KING’S MEN, the mark on the drawing is not a substantially exact representation of the mark as used in commerce.  Since the deletion of the quotation marks from the drawing would not change the commercial impression of the mark, the drawing may be amended to match the specimen.  The applicant has the option to either:  (1) amend the drawing to delete the punctuation; or (2) submit a new specimen showing use of the mark with the punctuation.

However, if the mark on the drawing is GOT MILK?, and the mark on the specimen is GOT MILK, the deletion of the punctuation from the drawing would constitute a material alteration because it changes the commercial impression from a question to a statement.  Therefore, the drawing may not be amended and the applicant must submit a substitute specimen that includes punctuation in order for the drawing to be a substantially exact representation.   See id.

807.12(a)(iii)    Punctuation on the Specimen but Not on the Drawing

Generally, extraneous, non-distinctive punctuation marks that appear on the specimen may be omitted from the drawing, if the matter on the drawing makes an impression separate and apart from the punctuation marks that appear on the specimen.   See TMEP §807.12(d).  For example, if the mark on the drawing is HOME RUN, and the mark on the specimen is "HOME RUN," the drawing is considered a substantially exact representation of the mark as used on the specimen.  The quotation marks on the specimen are nondistinctive and do not change the commercial impression of the mark, so it is unnecessary to amend the drawing or require a substitute specimen.

However, in rare instances, the punctuation marks on the specimen result in a mark with a different commercial impression than the mark shown on the drawing.  For example, if the mark on the specimen is PREGNANT?, and the mark on the drawing is PREGNANT, the mark on the drawing is not a substantially exact representation of the mark as actually used.  The question mark on the specimen transforms the word PREGNANT from a mere statement to a question, and, therefore, changes the commercial impression of the mark.  Moreover, the drawing cannot be amended to add the punctuation because it would result in a material alteration.  Therefore, the applicant must submit a new specimen showing the mark without the punctuation. In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1751-52 (TTAB 2012) (finding the mark GOT STRAPS on the drawing not a substantially exact representation of the mark GOT STRAPS? on the specimen). See TMEP §§807.14–807.14(f).

807.12(b)    Applications Under §44 of the Trademark Act

In a §44 application, the drawing of the mark must be "a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the applicant’s country of origin."  37 C.F.R. §§2.51(c), 2.72(c)(1).  The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is stricter than the standard used to determine whether a specimen supports use of a mark in an application under §1 of the Trademark Act.   See TMEP §1011.01.  The drawing in the United States application must display the entire mark as registered in the foreign country.  The applicant may not limit the mark to part of the mark shown in the foreign registration, even if it creates a separate and distinct commercial impression.

Exception:  Non-material informational matter that appears on the foreign registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.

When the mark on the drawing does not agree with the mark on the foreign registration, the applicant cannot amend the drawing of the mark if the amendment would materially alter the mark on the original drawing.  37 C.F.R. §2.72(c); TMEP §§807.14–807.14(f), 1011.01.

If the United States application has a black-and-white drawing, and color appears in the foreign registration, or color is claimed or described as a feature of the mark in the foreign registration, the mark in the United States drawing does not agree with the mark in the foreign registration.  In general, the black-and-white drawing in the United States application should be amended to agree with the color mark in the foreign registration, unless the proposed amendment would be a material alteration.

If the United States application has a color drawing, the same colors must be part of the mark in the foreign registration.  Whether the drawing in the United States application can be amended depends upon whether the amendment would be a material alteration of the mark.  If the United States application has a color drawing but the drawing in the foreign registration is in black and white with no color claim, the applicant must either:  (1) amend the drawing in the United States application to a black-and-white drawing, if the amendment would not be a material alteration; or (2) delete the §44 basis and proceed under §1.

See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the foreign registration in an application that seeks registration of a mark with a "phantom" or changeable element.

807.12(c)    Applications Under §66(a) of the Trademark Act

In an application under §66(a) of the Trademark Act, the drawing of the mark must be "a substantially exact representation of the mark as it appears in the international registration."  37 C.F.R. §2.51(d).  The IB will include a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States.  It is, therefore, unnecessary for the examining attorney to compare the drawing in the §66(a) application with the reproduction in the international registration.  See TMEP §§1904–1904.15 for further information about §66(a) applications.

The mark in a §66(a) application cannot be amended.   TMEP §§807.13(b), 1904.02(j).

Exception:  Non-material informational matter that appears on the international registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.

Because the drawing requirements in other countries often differ from those in the United States, an ambiguity may arise when the international registration contains no color claim, but the reproduction of the mark in the international registration is in color.  In such cases, the §66(a) applicant must either:  (1) make a color claim to clarify that the depicted color(s) is a feature of the mark and submit a description of the location of the color(s); or (2) submit a black-and-white reproduction of the mark.   See 37 C.F.R. §2.52(b)-(1).  This is not considered to be an amendment of the mark, but rather a clarification of the ambiguity.

If the USPTO receives a notification of correction to a mark in the International Register from the IB, the examining attorney must conduct a new search of the mark as corrected and, if appropriate, issue a provisional refusal of the request for extension of protection as corrected on all applicable grounds.  The USPTO must notify the IB of the provisional refusal within 18 months of notification of the correction.  See TMEP §1904.03(f) regarding notifications of corrections to the International Register.  If the reproduction of the corrected mark features color, the applicant will be required to comply with the requirements for a color drawing. 37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a)–807.07(a)(ii).

807.12(d)    Mutilation or Incomplete Representation of Mark

In an application under §1 of the Trademark Act, the mark on the drawing must be a complete mark, as evidenced by the specimen.  When the representation on a drawing does not constitute a complete mark, it is sometimes referred to as a "mutilation" of the mark.  This term indicates that essential and integral subject matter is missing from the drawing.  An incomplete mark may not be registered.   See In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); In re Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999) ; In re Boyd Coffee Co., 25 USPQ2d 2052 (TTAB 1993); In re Semans, 193 USPQ 727 (TTAB 1976).

However, in a §1 application, an applicant has some latitude in selecting the mark it wants to register.  The mere fact that two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes.  An applicant may apply to register any element of a composite mark if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen, i.e., the element performs a trademark function in and of itself. See, e.g., In re Univ. of Miami, 123 USPQ2d 1075, 1079 (TTAB 2017) (finding that the depiction of the mark in the drawing as a personified ibis wearing a hat and sweater created a separate and distinct commercial impression from literal elements that appeared on the hat and sweater in the specimens of use and thus the mark drawing was a substantially exact representation of the mark as used).

In a §44 application, the standard is stricter.  TMEP §1011.01.  The drawing in the United States application must display the entire mark as registered in the country of origin.  The applicant may not register part of the mark in the foreign registration, even if it creates a distinct commercial impression.

In any application, if registration is refused on the ground that the mark on the drawing does not agree with the mark as shown on the specimen or foreign registration, the applicant may not amend the drawing if the amendment would materially alter the mark on the original drawing.  37 C.F.R. §2.72; TMEP §§807.14–807.14(f), 1011.01.

This issue will not arise in a §66(a) application, because the IB includes a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States.  The mark in a §66(a) application cannot be amended.   TMEP §807.13(b).

In the following cases, an element of a composite mark was found not to present a separate and distinct commercial impression apart from any other matter with which the mark was or would be used on the specimen: Chem. Dynamics, 839 F.2d at 1569, 5 USPQ2d at 1828 (registration of design of medicine dropper and droplet properly refused, where the proposed mark is actually used as an integral part of a unified mark that includes a design of a watering can, and does not create a separate commercial impression); In re Lorillard Licensing Co., 99 USPQ2d 1312 (TTAB 2011) (finding that the drawing was not a substantially exact representation of the proposed mark, an orange-and-green color combination for the packaging of cigarettes, as appearing on the specimen); In re Pharmavite LLC, 91 USPQ2d 1778 (TTAB 2009) (mark comprised of the design of two bottles properly refused, finding that it does not create a separate and distinct commercial impression apart from the mark shown on the specimen and further that it is not a substantially exact representation of the mark shown on the specimen); In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) (refusing registration of the mark UPPER 90, finding that it does not form a separate and distinct commercial impression apart from the degree symbol that appears on the specimen); Miller Sports, 51 USPQ2d at 1059 (mark comprising the letter "M" and skater design properly refused, where the "M" portion of applicant’s "Miller" logo is so merged in presentation with remainder of logo that it does not create a separate commercial impression); Boyd Coffee, 25 USPQ2d at 2052 (mark comprising cup and saucer design properly refused as mutilation of mark actually used, which includes the cup and saucer design as well as a sunburst design, since the cup and saucer design does not create a separate and distinct commercial impression apart from the sunburst design); In re Sperouleas, 227 USPQ 166 (TTAB 1985) (torch design unregistrable apart from wording SOCRATES DELIGHT that appears on specimen, where the words are not only prominent but are also physically merged with the design, such that the design does not make a separate commercial impression); In re Volante Int’l Holdings,196 USPQ 188 (TTAB 1977) (mark consisting of a design of a double-headed girl, a dragon, and a tree is not a substantially exact representation of the mark actually used, which incorporates the visually inseparable and intertwined term "VIRGIN"); In re Library Rest., Inc., 194 USPQ 446 (TTAB 1977) (the words "THE LIBRARY" are so intimately related in appearance to other elements of the mark actually used that it is not possible to conclude that the pictorial features by themselves create a separate commercial impression); Semans, 193 USPQ at 727 (the mark KRAZY, displayed on the specimen on the same line and in the same script as the expression "MIXED-UP," does not in itself function as a registrable trademark apart from the unitary phrase "KRAZY MIXED-UP"); In re Mango Records, 189 USPQ 126 (TTAB 1975) (the typed mark MANGO is so uniquely juxtaposed with the pictorial elements of the composite that it is not a substantially exact representation of the mark as used on the specimen and does not show the mark in the unique manner used thereon).

An element of a proposed mark was found to create a separate commercial impression in the following cases: In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (C.C.P.A. 1950) (refusal to register the mark SERVEL as a mutilation of "SERVEL INKLINGS" reversed, where the specimen displays an insignia between the words "SERVEL" and "INKLINGS," and "INKLINGS" is printed in a large and different kind of type); In re Frankish Enters. Ltd., 113 USPQ2d 1964, 1974 (TTAB 2015) (finding three-dimensional design of monster truck body creates a commercial impression as an indication of origin separate and apart from wording and additional markings displayed on truck body as part of the specimen); In re Royal BodyCare Inc., 83 USPQ2d 1564 (TTAB 2007) (reversing refusal to register NANOCEUTICAL, finding that the term is actually used in a manner that creates a commercial impression separate and apart from the house mark or trade name "RBC’s"); In re Big Pig, Inc.,81 USPQ2d 1436 (TTAB 2006) (PSYCHO creates a separate commercial impression apart from additional wording and background design that appears on the specimen, where the word "PSYCHO" is displayed in a different color, type style and size, such that it stands out); In re 1175856 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006) (refusal to register WSI and globe design reversed, since the letters "WSI" and globe design create a separate commercial impression apart from a curved design element that appears on the specimen); In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (reversing the refusal to register TINEL-LOCK as mutilation of mark "TRO6AI-TINEL-LOCK-RING," noting that part or stock number does not usually function as a source identifier, and the "fact that hyphens connect both the part number and the generic term to the mark does not, under the circumstances presented in this case, create a unitary expression such that ‘TINEL-LOCK’ has no significance by itself as a trademark."); In re Nat'l Inst. for Auto. Serv. Excellence,218 USPQ 744, 745 (TTAB 1983) (design of meshed gears "is distinctive in nature" and "creates a commercial impression separate and apart from the words superimposed thereon"); In re Schecter Bros. Modular Corp.,182 USPQ 694 (TTAB 1974) (where specimens show mark consisting in part of "RAINAIRE" together with its shadow image, it is not a mutilation of mark to delete shadow image from drawing since "RAINAIRE" creates the essential impression); In re Emco, Inc., 158 USPQ 622 (TTAB 1968) (reversing the refusal and concluding that the law and the record supported applicant’s position that RESPONSER is registrable without addition of the surname "MEYER").

See TMEP §807.14(c) regarding the effect of the addition or deletion of punctuation on the commercial impression of the mark.

807.12(e)    Compound Word Marks and Telescoped Marks

Like any other drawing, a drawing of a compound word mark or telescoped mark must be a substantially exact representation of the mark as it appears on the specimen in a §1 application or on the foreign registration in a §44 application.

A compound word mark is comprised of two or more distinct words, or words and syllables, that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, PULSAIR).  Often, each word or syllable in a compound word mark is displayed or highlighted by:  (1) capitalizing the first letter of each word or syllable (e.g., TimeMaster); or (2) presenting the words or syllables in a different color, script, or size (e.g., RIBtype).

If the drawing depicts the mark as a compound word mark, but the specimen shows the mark as two separate words, or vice versa, the examining attorney must determine whether the mark on the drawing is a substantially exact representation of the mark on the specimen and/or whether an amendment of the drawing would be a material alteration of the mark.   See In re Innovative Cos., 88 USPQ2d 1095 (TTAB 2008) (FREEDOMSTONE not a substantially exact representation of FREEDOM STONE, but amendment of FREEDOMSTONE to FREEDOM STONE not deemed a material alteration). For example, if the drawing depicts the mark as BOOKCHOICE, but the specimen shows it as BOOK CHOICE, the mark on the drawing is not a substantially exact representation of the mark on the specimen. An amendment of the drawing would not be a material alteration. However, depending upon the nature of the goods/services, a disclaimer might be required. Note that a specimen showing the mark as BookChoice would be a substantially exact representation.

A telescoped mark is comprised of two or more words that share letters (e.g., SUPERINSE).  A telescoped word must be presented as a unitary term with the letters shared.  The telescoped element may not be represented as two words, because the shared letter is an aspect of the commercial impression, (e.g., SUPERINSE, not SUPE RINSE or SUPER RINSE).

See TMEP §§1213.05(a)–1213.05(a)(ii) regarding disclaimers in telescoped and compound word marks.

807.13    Amendment of Mark

807.13(a)    Amendment of Mark in Applications Under §§1 and 44

Section 1(a) Application.  The mark in an application under §1(a) of the Trademark Act can be amended if the specimen supports the amendment and the amendment does not materially alter the mark.  37 C.F.R. §2.72(a).  See TMEP §§904–904.07(b) and 1301.04–1301.04(d) regarding specimens, and TMEP §§807.14–807.14(f) regarding material alteration.

Section 1(b) Application.  The mark in an application under §1(b) of the Trademark Act can be amended if the specimen filed with an amendment to allege use or statement of use supports the amendment, and the amendment does not materially alter the mark.  37 C.F.R. §2.72(b).  See TMEP §§904–904.07(b) and 1301.04–1301.04(d) regarding specimens, TMEP §§1104–1104.11 regarding amendments to allege use, TMEP §§1109–1109.18 regarding statements of use, and TMEP §§807.14–807.14(f) regarding material alteration.

Section 44 Application.  The mark in an application under §44 of the Trademark Act can be amended if the mark in the foreign registration certificate supports the amendment, and the amendment does not materially alter the mark.  37 C.F.R. §2.72(c).  See TMEP §1011.01 regarding the requirement that the mark on the drawing in a §44 application be a substantially exact representation of the mark as it appears in the foreign registration certificate, and TMEP §§807.14–807.14(f) regarding material alteration.

807.13(b)    Mark in §66(a) Application Cannot be Amended

The Madrid Protocol and the Common Regs. do not permit amendment of the mark in an international registration.  If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application.  The IB’s Guide to International Registration, Para. B.II.72.02, provides as follows:

[T]here is no provision for a mark that is recorded in the International Register to be amended in any way, either on renewal or at any other time.  If the holder wishes to protect the mark in a form which differs, even slightly, from the mark as recorded, he must file a new international application.  This is true even if the mark has been allowed to be changed in the basic application, the registration resulting from the basic application or the basic registration, as the case may be . . . .

Accordingly, because an application under §66(a) of the Trademark Act is part of the international registration, 37 C.F.R. §2.72  makes no provision for amendment of the mark in a §66(a) application, and the USPTO will not permit any such amendments.   TMEP §1904.02(j); see 68 Fed. Reg. 55748, 55756 (Sept. 26, 2003).

Exceptions:  Non-material informational matter that appears on the international registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing. Additionally, in limited circumstances, a standard character claim may be added to a §66(a) application. See TMEP §807.03(h).

However, the applicant must comply with U. S. requirements regarding drawings and descriptions of the mark.   TMEP §1904.02(k).

Similarly, after registration, a registrant generally cannot amend under §7 of the Trademark Act a mark in a registered extension of protection, except to add a standard character claim if the registered mark complies with the requirements of 37 C.F.R. §2.52(a)(1)–(5).   TMEP §1609.02. See TMEP §1609.01(a) regarding additional, limited amendments permitted in a registered extension of protection.

See TMEP §§1904.03(f) and 1904.14 regarding notifications of corrections in the International Register with respect to pending §66(a) applications and registered extensions of protection.

807.14    Material Alteration of Mark

Trademark Rule 2.72, 37 C.F.R. §2.72, prohibits any amendment of the mark in an application under §1 or §44 of the Trademark Act that materially alters the mark on the drawing filed with the original application.

The test for determining whether an amendment is a material alteration is as follows:

The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark.  The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition.  If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application.

In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997), quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740,743-44 (TTAB 1983).  This test applies to both an amendment of the description of a mark and an amendment of the mark on a drawing.   In re Thrifty, Inc., 274 F.3d 1349, 1352-54, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001).

Although the test refers to republication, it also applies to amendments to marks proposed before publication.  Material alteration is the standard used for evaluating amendments to marks in all phases of prosecution, i.e., before publication, after publication, and after registration.  See TMEP §§1609.02–1609.02(g) regarding amendment of registered marks.

As a general rule, the addition of any element that would require a further search will constitute a material alteration.   In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986).  However, while the question of whether a new search would be required is a factor to be considered in deciding whether an amendment would materially alter a mark, it is not necessarily the determining factor.   In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218-19 (TTAB 2000) ; In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB 1990).

Each case must be decided on its own facts, and these general rules are subject to exceptions.  The controlling question is always whether the old and new forms of the mark create essentially the same commercial impression. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1370, 116 USPQ2d 1129, 1133-34 (Fed. Cir. 2015) (holding minor adjustment to the font and alterations to the design element of registered mark insufficient to change the commercial impression created by the mark).

See TMEP §807.14(a) regarding amendments to delete matter from a drawing, TMEP §807.14(b) regarding the addition or deletion of previously registered matter, TMEP §807.14(c) regarding the addition or deletion of punctuation, TMEP §§1202.02–1202.02(f)(ii) regarding registration of trade dress marks, TMEP §§1202.02(c)(i)–1202.02(c)(i)(C) regarding drawings in trade dress applications, and TMEP §§1215.08–1215.08(b) regarding material alteration in marks comprised, in whole or in part, of domain names.

807.14(a)    Removal or Deletion of Matter from Drawing

An applicant may request deletions from the mark on the drawing, and the examining attorney may approve the request if he or she believes the deletions are appropriate and would not materially alter the mark.   See 37 C.F.R. §2.72.

Deletion of matter from the mark can result in a material alteration.   In re Dillard Dep't Stores, Inc., 33 USPQ2d 1052 (Comm’r Pats. 1993) (proposed deletion of highly stylized display features of mark IN•VEST•MENTS held to be a material alteration of a registered mark).  However, nondistinctive matter may be deleted, if it does not constitute a material alteration.  For example, the deletion of the generic name of the goods or services would not generally be considered a material alteration, unless it was so integrated into the mark that the deletion would alter the commercial impression.  In some circumstances, nondistinctive matter may be deleted if the overall commercial impression is not altered.  Also, deletions of matter determined to be unregistrable under §§2(a) or 2(b) of the Act, 15 U.S.C. §§1052(a)  or (b), are sometimes permissible. See TMEP §§1203–1203.03(c)(iii) regarding refusal under §2(a) of matter that is immoral, scandalous, or creates false suggestion of connection, and TMEP §§1204–1204.05 regarding refusal under §2(b) of marks that comprise flag, coat of arms, or other insignia of the United States, of any state or municipality, or of any foreign nation.

If a specimen shows that matter included on a drawing is not part of the mark, the examining attorney may require that such matter be deleted from the mark on the drawing, if the deletion would not materially alter the mark.  See In re Sazerac Co., 136 USPQ 607 (TTAB 1963) and cases cited therein.

The symbols "TM," "SM," and the registration notice ® must be deleted from the drawing.

Informational matter, such as net weight and volume statements, lists of contents, addresses, and similar matter, should also be deleted from the mark, unless it is truly part of a composite mark and the removal of this matter would alter the overall commercial impression.  If unregistrable matter, including informational matter and the name of the goods, is incorporated in a composite mark in such a way that its removal would change the commercial impression of the mark or make it unlikely to be recognized, the matter may remain on the drawing and be disclaimed.  See TMEP §1213.03(b) regarding disclaimer of such matter.  However, this type of matter rarely is part of a composite mark.

Functional matter that is part of an otherwise registrable three-dimensional trade dress mark may also be removed or deleted from the drawing by depicting that matter in broken or dotted lines.  Since functionality is an absolute bar to registration on the Principal Register or the Supplemental Register, features of a trade dress mark that are deemed functional under trademark law are never capable of acquiring trademark significance and are not registrable.  Therefore, such removal or deletion of the functional features generally will not be considered a material alteration of the mark, regardless of the filing basis of the application.  See TMEP §§1202.02(a)–(a)(viii) regarding functionality, and TMEP §1202.02(c)(i)(A) regarding functional matter on drawings in trade dress applications.

See TMEP §807.14(b) regarding addition or deletion of previously registered matter.

807.14(b)    Addition or Deletion of Previously Registered Matter

Addition.  An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted.  The rationale is that "[t]he addition of applicant’s well-known registered mark to the mark sought to be registered . . . is not a material change which would require republication of the mark."   Florasynth Labs., Inc. v. Mülhens, 122 USPQ 284, 284 (Comm’r Pats. 1959) (addition of applicant’s previously registered mark 4711 to the mark ELAN held not a material alteration).  However, the addition of matter that the applicant has previously registered for different goods or services is not permissible.  In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1886 (TTAB 1988).  An amendment adding previously registered matter is also unacceptable if it substantially alters the original mark.   In re John LaBatt Ltd., 26 USPQ2d 1077, 1078 (Comm’r Pats. 1992) ("Here, the applicant does not seek to merely add an element from one registration to another.  Rather, the applicant seeks to eliminate its original mark, and substitute another.  The exception to the material alteration rule clearly does not encompass cases where the original mark disappears.").

Deletion.  The question of whether a proposed amendment to delete previously registered matter from a mark is a material alteration should be determined without regard to whether the matter to be deleted is the subject of an existing registration.

807.14(c)    Addition or Deletion of Punctuation

Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.  See, e.g., In re Litehouse, Inc., 82 USPQ2d 1471, 1474 (TTAB 2007) and cases cited therein (finding the mark CAESAR!CAESAR! to be merely descriptive and noting that "neither the mere repetition of the word CAESAR . . . nor the presence of the exclamation points in the mark, nor both of these features combined, suffices to negate the mere descriptiveness of the mark as a whole");   see also In re Promo Ink, 78 USPQ2d 1301, 1305 (TTAB 2006) (finding the mark PARTY AT A DISCOUNT! to be merely descriptive, specifically noting that "[t]his punctuation mark does not significantly change the commercial impression of the mark.  It would simply emphasize the descriptive nature of the mark to prospective purchasers . . .").

However, in rare cases, punctuation may be incorporated into a mark in such a way that the commercial impression of the mark would be changed by the addition or deletion of such punctuation.   See In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1748 (TTAB 2012) (finding "the proposed addition of a question mark to the mark ‘GOT STRAPS’ constitutes a material alteration because it changes the commercial impression of the original mark from a declaratory statement to an interrogative phrase"); Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm’r Pats. 1974), overruled on other grounds, In re Umax Data Sys., Inc., 40 USPQ2d 1539 (Comm'r Pats. 1996) (proposed change of FYE[R-W]ALL and design to FYER-WALL in block letters denied as material alteration, in part, because brackets changed commercial impression of mark as the initial letters of applicant’s name, "R" and "W," were no longer emphasized).  For example, unlike most cases where the addition of an exclamation point does not affect the commercial impression of a mark, the addition of an exclamation point to the mark MOVE IT transforms the words from a mere command to relocate an object to an exclamatory statement with more than one meaning – MOVE IT! – often used to order a person out of the way, and, therefore, changes the commercial impression of the mark.

Some other examples, though not exhaustive, are:

• the addition or deletion of a question mark, which changes a statement into a question or vice versa ( see In re Guitar Straps Online, 103 USPQ2d at 1748);
• the addition or deletion of spaces between the syllables of a term, which may change the commercial impression created by the separate syllables or the unitary word; and
• the addition or deletion of a period before the term ".com," which can change wording to or from a website address.

See also TMEP §807.12(a)(i)–(iii) regarding the role of punctuation in determining whether the mark on the drawing agrees with the mark on the specimen.

807.14(d)    Amendments to Correct "Internal Inconsistencies"

The USPTO will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.  37 C.F.R. §2.72(a)(2), (b)(2), (c)(2).

Prior to October 30, 1999, in certain limited circumstances, the USPTO would accept an amendment that corrected an "internal inconsistency" in an application as originally filed, without regard to the issue of material alteration.  Because 37 C.F.R. §2.72(b), (c), and (d)  did not expressly prohibit an amendment that materially altered the mark on the original drawing, the USPTO would accept an amendment to correct an "internal inconsistency," even if the amendment materially altered the mark on the original drawing.  An application was considered "internally inconsistent" if the mark on the original drawing did not agree with the mark on the specimen in an application based on use, or with the mark on the foreign registration in an application based on §44 of the Act.   See In re ECCS Inc., 94 F.3d 1578, 1581, 39 USPQ2d 2001, 2004 (Fed. Cir. 1996); In re Dekra e.V., 44 USPQ2d 1693, 1695-96 (TTAB 1997).

Effective October 30, 1999, 37 C.F.R. §2.72  was amended to prohibit amendments that materially alter the mark on the drawing filed with the original application.  Furthermore, 37 C.F.R. §2.52  was amended to state that the "drawing depicts the mark sought to be registered."  Accordingly, the USPTO no longer accepts amendments to cure "internal inconsistencies," if these amendments materially alter the mark on the original drawing. See In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1217 (TTAB 2000) ; see also In re Tetrafluor Inc., 17 USPQ2d 1160, 1162 (Comm'r Pats. 1990) (finding examining attorney properly refused to accept amendment to "correct a typographical error" that materially altered mark on original drawing page).

If a paper application includes a separate drawing page showing a mark, and a different mark appears in the written application, the drawing controls for purposes of determining what the mark is.   In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063, 1064 (Dir USPTO 2001); see TMEP §§202.01, 807.01.  Similarly, if an applicant enters a standard character mark, or attaches a digitized image of a mark, in the "Mark" field on a TEAS application, and a different mark appears in another field, the mark entered in the "Mark" field will control for purposes of determining what the mark is.  The applicant may not amend the mark if the amendment is a material alteration of the mark on the drawing.

For example, if the applicant submits a drawing page showing the word mark "ABC and design," the applicant may not amend the application to delete the wording "and design," and add a design feature to the letters "ABC."  However, the applicant may amend the drawing to "ABC."  See In re Meditech Int’l Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (finding mark comprised of a design of a blue star to be a material alteration of the typed words "DESIGN OF A BLUE STAR").

807.14(e)    Amendments to Color Features of Marks

If a proposed amendment to a color feature of a mark does not change the commercial impression of the mark, the amendment is unlikely to have an adverse impact on public notice.  In such cases, the mark need not be republished, and the proposed amendment would not be deemed a material alteration.

Whenever a proposed color amendment is refused as a material alteration, the examining attorney must clearly explain why the proposed amendment changes the meaning or overall impression of the mark, or impacts the likelihood of confusion analysis.

807.14(e)(i)    Black-and-White Drawings

The amendment of a black-and-white special form drawing to one claiming a color(s) as a feature of the mark generally does not constitute a material alteration.

If a mark is initially depicted in a black-and-white special form drawing in which no color is claimed, the drawing is presumed to contemplate the use of the mark in any color, without limitation.  See, e.g., In re Data Packaging Corp., 453 F.2d 1300, 1302, 172 USPQ 396, 397 (C.C.P.A. 1972).  The amendment of the black-and-white drawing to one claiming a particular color as a feature of the mark is, therefore, a restriction or limitation of the applicant’s rights.

807.14(e)(ii)    Marks that Include Color and Other Elements

The extent to which color contributes to the commercial impression created by a mark is often determined by the type of mark in question (i.e., word mark, design mark, or trade dress).  In some cases, color may play only an incidental or insignificant part in creating the commercial impression of a mark, such as the color lettering of a word mark.  In other cases, color is the only feature of the mark that creates a commercial impression, such as where the mark consists only of color(s) applied to goods or their packaging, or to articles used in the sale or advertising services.

Word Marks

In general, the addition, deletion, or amendment of color lettering in a word mark does not result in a material alteration of the mark.

Word marks may appear as stylized marks in color lettering.  With the possible exception of generic wording, as discussed below, the literal portions of word marks are likely to be the dominant portions that create the greatest commercial impression.   See Inter-State Oil Co. v. Questor Corp., 209 USPQ 583, 586 (TTAB 1980) .  In most cases, the color in the lettering is unlikely to have a significant impact on the commercial impression created by the mark.

Exception – Generic Terms.  Generic terms are incapable of functioning as marks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register.  However, if the generic wording appears in color lettering, the color portion may be capable of functioning as a source indicator.  See, e.g., Courtenay Commc'ns Corp., v. Hall, 334 F.3d 210, 216, 67 USPQ2d 1210, 1214 (2nd Cir. 2003) and cases cited therein ("There are many examples of legally protected marks that combine generic words with distinctive lettering, coloring, or other design elements.").  With respect to such generic word marks, the color element of the wording is likely to be the more dominant portion in creating the commercial impression of the mark.  Therefore, in cases where the entire literal portion is generic, a proposed amendment to the color portion of the word mark generally would be a material alteration.

Design Marks

In general, the addition, deletion, or amendment of color features in a design mark does not result in a material alteration of the mark.

In a color design mark, the design portion is likely to be the most dominant portion of the mark in creating a commercial impression.  Although the color portion is part of the mark, it only appears in the context of the design and is not a separable element.  The color portion is, therefore, less likely than the design portion to play a significant role in likelihood of confusion or trademark selection considerations.  For example, the fact that two different designs, such as a red hat design and a red boat design, may appear in identical colors is unlikely to result in a finding of likelihood of confusion.  In contrast, if two boat designs are identical in stylization, it is likely that the designs would be held to be confusingly similar regardless of any differences in their respective colors.

Exception - Color Impacts the Meaning or Significance of the Mark.  An amendment that causes the mark to have a new meaning or significance in the context of the goods or services is likely to be a material alteration.  For example, the amendment of a blue colored drop for "spring water," which looks like a rain drop, to a red drop, which looks like blood, would likely be a material alteration because the change in the color of the drop has altered the meaning or commercial impression of the mark.  An amendment of a rainbow design, consisting of an arc with a spectrum of colors, to a black or solid-colored arc, would be a material alteration, regardless of the goods or services, because the amended mark is just an arc and is no longer identifiable as a rainbow.

Exception – Color is the Dominant Portion of the Mark.  Generally, if the color portion to be amended constitutes the dominant or most significant part of the entire mark, it becomes more likely that the proposed color amendment is a material alteration.  For example, if the design mark consists solely of a common geometric shape, the color element is likely to be the dominant element of the mark.  As a result, amending the color of a common geometric shape is likely to be a material alteration.

Another factor to consider in assessing the dominance of the color element of the mark is the size or prominence of the color design or graphic element to be amended in proportion to the rest of the mark.  For example, if it is clear that the mark consists of the overall color scheme of a product’s trade dress, such as the product package or container, an amendment to a particular color element that is small or insignificant in proportion to the entire mark is unlikely to be a material alteration.  Conversely, an amendment to a color element that is large in proportion to the entire mark, or is a dominant element of the overall color scheme, is more likely to be a material alteration.  For example, if a mark consists solely of the color scheme or pattern of a package or container that is equally divided into two colors, amending one or both colors is more likely to be a material alteration.

807.14(e)(iii)    Color Marks

The amendment of any color in a color mark is a prohibited material alteration.

Color marks are marks that consist solely of one or more colors used on particular objects or substances as a source identifier (as opposed to marks that include color in addition to other elements).   See TMEP §§1202.05–1202.05(i).  Color marks generally appear in a drawing with the outline or configuration of the goods on which they appear to show the placement of the color mark.  However, the shape or configuration of the goods is not part of the mark.  The mark is comprised solely of the color as applied to the object or substance, in the manner depicted and described, so that changing or amending the color of the mark would always change the entire commercial impression created by the mark.

An amendment of the mark to show the same color on a different object is also generally a material alteration (e.g., an amendment of a drawing of a blue hammer to a blue saw).  A color takes on the characteristics of the object to which it is applied, and the commercial impression of a color may change depending on the object to which it is applied.   See In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) ("[A] word mark retains its same appearance when used on different objects, but color is not immediately distinguishable as a service mark when used in similar circumstances."); In re Hayes, 62 USPQ2d 1443, 1445 (TTAB 2002) ; TMEP §1202.05(c).

See TMEP §807.07(e) regarding black-and-white drawings in an application that includes a color claim, and TMEP §807.07(c) regarding incorrect color claims.

807.14(f)    Material Alteration:  Case References

Proposed amendments to marks were found to be material alterations in the following decisions:   In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001) (finding amendment describing a mark as the color blue applied to an unlimited variety of objects to be a material alteration of the mark on the original drawing, which depicted the color blue applied to a building); In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997) (finding proposed addition of house mark to conform to mark on foreign registration to be a material alteration of the mark on the drawing filed with original application); In re Guitar Straps Online, LLC, 103 USPQ2d 1745 (TTAB 2012) (finding proposed amendment from "GOT STRAPS" to "GOT STRAPS?" to be a material alteration); In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (TTAB 2000) (finding proposed amendment from "TACILESENSE" to "TACTILESENSE" to be a material alteration); In re Meditech Int’l Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) ("A drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, would both be considered material alterations vis-à-vis a drawing consisting of the typed words DESIGN OF A BLUE STAR."); In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044 (TTAB 1990) (finding addition of wording "MR. SEYMOUR" to design mark to be a material alteration); In re The Wine Soc’y of Am., Inc., 12 USPQ2d 1139 (TTAB 1989) (finding proposed amendment to replace typed drawing of "THE WINE SOCIETY OF AMERICA" with a special form drawing including those words with a crown design and a banner design bearing the words "IN VINO VERITAS" to be a material alteration); In re Nationwide Indus., Inc., 6 USPQ2d 1882 (TTAB 1988) (finding addition of house mark "SNAP" to product mark "RUST BUSTER" to be a material alteration); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986) (finding addition of house mark "PIERCE" to "CHIK’N BAKE" to be a material alteration).

Proposed amendments to marks were found not to constitute a material alteration in the following cases:   Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1370, 116 USPQ2d 1129, 1133-34 (Fed. Cir. 2015) (holding minor adjustment to the font and alterations to the design element of registered mark insufficient to change the commercial impression created by the mark); In re Innovative Cos., LLC, 88 USPQ2d 1095 (TTAB 2008) (finding amendment from "FREEDOMSTONE" to "FREEDOM STONE" not to be a material alteration); Paris Glove of Can., Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856, 1862 (TTAB 2007) (finding "AQUASTOP" depicted on one line in semicircular form not to be a material alteration of "AQUA STOP" depicted on two lines in rectangular form; the Board explained that "the commercial impression of the mark is dependent upon the literal terms AQUA STOP and not on the rectangular, semicircular or linear forms of display"); In re Finlay Fine Jewelry Corp., 41 USPQ2d 1152 (TTAB 1996) (finding "NEW YORK JEWELRY OUTLET" not to be a material alteration of "NY JEWELRY OUTLET"); In re Larios, S.A., 35 USPQ2d 1214 (TTAB 1995) (finding "VINO DE MALAGA LARIOS" and design not to be a material alteration of "GRAN VINO MALAGA LARIOS" with similar design); Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740 (TTAB 1983) (finding amendment inverting the design portion of the mark not to be a material alteration).

807.15    Substitute Drawings

When requiring a substitute drawing, the examining attorney must inform the applicant of the specific reason for rejecting the existing drawing and explain what type of amendment is needed to comply with the rules.

If the examining attorney requires a change in the drawing, the applicant must submit a substitute drawing, except in the limited circumstances discussed in TMEP §807.16 in which the USPTO will amend or correct a drawing.  The USPTO will not return the original drawing to the applicant.  37 C.F.R. §2.25.

If the examining attorney requires correction of a standard character drawing, the applicant may select "Standard Characters" in the Mark Information section of the TEAS Response to Office Action form and enter the proposed amended mark. If the required change is to a special-form drawing, the applicant may select "Special Form" in the Mark Information section of the TEAS Response to Office Action form and attach a digitized image of the substitute drawing to the form or submit a separate drawing page if the response is filed on paper. The USPTO will accept a substitute drawing embedded in a paper response to an Office action if the substitute drawing meets the requirements of 37 C.F.R. §§2.51  and 2.52.

When the applicant voluntarily submits a substitute drawing, the examining attorney must determine whether the substitute drawing is acceptable.  See TMEP §807.17 regarding the procedures for processing unacceptable amendments to drawings.

When a substitute drawing is submitted and accepted, the original drawing is replaced by the substitute drawing.  The examining attorney must ensure that the automated records of the USPTO reflect the amended mark, and have the Trademark database corrected, if necessary.  The original drawing remains in the record.

The examining attorney must also ensure that the mark drawing code is changed, if necessary.  See TMEP §807.18 concerning mark drawing codes.

807.16    Amendment of Drawings by the USPTO

If the examining attorney requires correction of a standard character drawing, the applicant may submit a substitute drawing (see TMEP §807.15), or may request that the USPTO amend the drawing.  If only a minor correction to a standard character drawing (such as deletion of the letters "TM") is required, the examining attorney may correct the drawing on his or her own initiative, or may require the applicant to submit a substitute drawing.

When correcting a standard character drawing, the examining attorney must create a new drawing page, and have the new drawing page scanned.  The examining attorney must also ensure that the "Word Mark" field in the Trademark database is corrected.

When the correction involves a special form drawing, the examining attorney will delete matter from the drawing only if the matter to be deleted is sufficiently separate from the matter that is to remain.  If the matter to be deleted is not sufficiently separate from the matter that is to remain, the applicant must submit a substitute drawing.  If the examining attorney deletes matter from the drawing, the examining attorney must ensure that the corrected drawing is scanned, and that it appears in the Trademark database, before the mark is approved for publication or registration.

The examining attorney must also ensure that the mark drawing code is changed, if necessary.  See TMEP §807.18 concerning mark drawing codes.

807.17    Procedures for Processing Unacceptable Amendments to Drawings

If an applicant submits an amendment to the drawing and the examining attorney determines that the amendment is unacceptable, the examining attorney must issue an Office action refusing to accept the amendment and advising the applicant that the amendment will not be entered, and that the previous drawing remains the operative drawing.  If the unacceptable amended drawing has been entered into the automated records of the USPTO, the examining attorney must ensure that the automated records are modified to reflect that the previous drawing is operative.

The applicant must respond to the Office action to avoid abandonment.  If the applicant submits arguments in support of acceptance of the amendment and the examining attorney determines that the amendment is still unacceptable, the examining attorney must issue a final refusal of the amendment, if the application is otherwise in condition for final action.

807.18    Mark Drawing Code  

Standard Character Drawings.  Standard character drawings are coded in the USPTO’s automated system as mark drawing code 4.  Prior to November 2, 2003, typed drawings (see TMEP §807.03(i)) were coded as mark drawing code 1.  Mark drawing code 1 is not available for applications filed on or after November 2, 2003.  Applications that were filed before November 2, 2003, may be amended to mark drawing code 1, if appropriate for that drawing.  Only mark drawing code 4 should be used for standard character drawings.

Special Form Drawings.  Marks comprising only a design are coded as mark drawing code 2; marks comprising words plus a design are coded as mark drawing code 3; and marks comprising stylized letters and/or numerals with no design feature are coded as mark drawing code 5.  All marks consisting of words, numerals, and/or diacritical symbols for which no standard character claim (see TMEP §807.03(a)) has been submitted are coded as mark drawing code 5.

Non-Visual Marks.  "Drawings" of non-visual marks (see TMEP §807.09) are coded as mark drawing code 6.