1011.04 Drawings and Descriptions of Three-Dimensional, Multimedia and Non-Visual Marks
If the foreign application or registration depicts several views of a three-dimensional mark, the examining attorney must require the applicant to comply with 37 C.F.R. §2.52(b)(2) and submit an acceptable drawing that depicts a single rendition of the mark. See generally TMEP §§807-807.18 regarding drawings. In lieu of submitting a single-rendition drawing, the applicant may petition the Director, pursuant to 37 C.F.R. §2.146(a)(5), to waive the requirement and accept a drawing featuring multiple views of the mark. See TMEP Chapter 1700 regarding petitions to the Director.
In all such cases, the applicant must indicate that the mark is three-dimensional. 37 C.F.R. §2.52(b)(2); TMEP §807.10. To depict the commercial impression created by use of the mark, the applicant may be required to submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken-line representation of the object or location in which the mark appears. The applicant must also use broken lines to show matter not claimed as part of the mark. For any drawing using broken 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 lines, e.g., by indicating that the matter shown by the broken 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); TMEP §807.08.
With respect to marks that include a two-dimensional design, color, words, letters, or numbers, or a combination thereof, in a particular font, style, size, or color, applicant must submit a special form drawing and a description of the mark. 37 C.F.R. §§2.37, 2.52(b), 2.52(b)(5); TMEP §807.04(b). These requirements apply to marks that feature animated elements or combine image and sound, including multimedia, motion, and holograms, as such marks are capable of being represented visually. If the foreign application or registration does not include a graphic representation or description of a non-traditional mark that features visually representable elements, the applicant will be required to submit a copy of the electronic reproduction of the mark of record in the foreign intellectual property office. 37 C.F.R. §2.61(b). For example, if the true copy of the foreign registration features a URL address of the location of an electronic file depicting the reproduction on the foreign office’s website, the applicant should include with the U.S. application an electronic copy that is a substantially exact representation of the mark for which registration is sought in the United States. See 37 C.F.R §2.51(c). The reproduction must be submitted through TEAS in an electronic file in .wav, .wmv, .wma, .mp3, .mpg, or .avi format and should not exceed 5MB in size. The examining attorney will compare the contents of the submitted electronic file with the copy located on the foreign office’s website for consistency between the marks and accuracy of the description of the mark. If the submitted file is not a substantially exact representation of the mark depicted on the foreign office’s website, the examining attorney will require submission of an electronic file that does depict a substantially exact representation. If the description of the mark does not adequately convey the commercial impression of the mark, the examining attorney must require the applicant to amend the description. See TMEP §808.03(c)(i). The description of a mark that features a combination of audio, visual, and/or motion elements, or that consists of a hologram, must be published in the Trademark Official Gazette and included on the certificate of registration to give adequate constructive notice to third parties as to the nature of the claimed elements of the mark.
With respect to sound only, scent, and other non-visual marks, an applicant is not required to submit a drawing, but must submit a detailed description of the mark. TMEP §807.09. If the foreign registration includes a visual reproduction, such as a musical staff depicting the notes comprising a musical sound mark or waveform depiction of a non-musical sound, the U.S. application need not include such a drawing. As the drawing of the mark must be a substantially exact representation of the mark in the foreign registration, and the description of the mark defines the mark sought to be registered in a non-visual mark, the description of the mark in the U.S. application must be substantially comparable to any description, sound file, or visual depiction of the mark in the foreign application or registration. 37 C.F.R. §§2.51(c), 2.52(e). If the foreign registration does not include a mark description, but features a URL address of the location of an electronic file featuring a recording of the sound on the foreign office’s website, the applicant should include with the U.S. application an electronic copy that is a substantially exact representation of the mark for which registration is sought in the United States. See 37 C.F.R. §2.51(c). The applicant may include with the application, or may be required by the examining attorney to submit, additional electronic files that may be reasonably necessary to the proper examination of the application. See 37 C.F.R. §2.61(b).