808.03(b) No Description in Application
If the description is not submitted with the initial application, the examining attorney must ensure that a description is included in the record. Applications that include vague statements such as "the mark contains wording and a design," "the mark contains a miscellaneous design," and "the mark consists of words" should be treated as the equivalent of accurate but incomplete descriptions (see TMEP § 808.03(c)).
For marks that consist only of wording in stylized font, with no design element, the applicant’s completion of the "Literal Element" field in the application form may be accepted for purposes of compliance with the rule, even if an unacceptably vague statement or no information is entered in the "Description of the Mark" field. In these cases, where the description need not be published, the "Literal Element" information need not be copied into the "Description of the Mark" field in the relevant Trademark database.
Likewise, for §66(a) applications for marks that consist only of wording in stylized font, with no design element, the applicant’s completion of the "Textual Elements of Mark" field may be accepted for purposes of compliance with the rule. In these cases, where the description need not be published, the "Textual Elements of Mark" information need not be copied into the "Description" field in the relevant Trademark database.
Similarly, in any application for a mark that includes color, the applicant’s provision of a color location statement (either in the original application or in response to a requirement) may be accepted for purposes of compliance with the rule. A color location statement provided in the initial application will automatically appear in the "Description" field in the relevant Trademark database and must remain there for publication.
Where an Office action or regular examiner’s amendment is otherwise unnecessary, in the following situations the examining attorney may enter a description by examiner’s amendment without the prior approval of the applicant (as with any examiner’s amendment, the examining attorney is thereby providing the applicant with notice and an opportunity to disagree):
- The mark consists only of wording in stylized font, with no color claim and with no design element (note that an examiner’s amendment would only be necessary where the applicant also failed to provide the "Literal Element," which can serve as a description for this type of mark);
- The mark includes no color claim and consists only of wording in combination with underlining or a common geometric shape used as a vehicle for the display of the wording; or
- The record already contains an informal indication of what the mark comprises.
See TMEP §707.02.
The following are examples of descriptions that may be entered by examiner’s amendment without prior approval of the applicant:
The mark consists of the stylized wording "GROB" within a rectangle.
The mark consists of the stylized wording "LIGHTYEAR ALLIANCE" with a curved line to the right of the wording.
The mark consists of the stylized wording "GSC PARTNERS" with a curved line between "GSC" and "PARTNERS".
The mark consists of the stylized letters "P" "A" "C" "T" each within a shaded circle and the stylized wording "PURE ADVANCED COSMETIC TECHNOLOGY" underneath.
The mark consists of the stylized wording "H BLOCK" within a square with a horizontal line between "H" and "BLOCK".
The mark consists of the stylized wording "REECE & NICHOLS" with the ampersand within a square.
In the foregoing examples, a description is necessary to comply with the requirements of the rule, but need not be published in the Trademark Official Gazette or included on the registration certificate. In such cases, the "no-call" examiner’s amendment should neither be sent to the LIE nor entered for printing by the examining attorney. Where publication of the description is unnecessary, the examiner’s amendment must indicate that the description will not be published in the Trademark Official Gazette or included on the registration certificate. This indication in the examiner’s amendment ensures that at the publication review stage, the description is not mistakenly entered for publication.
On the other hand, where an Office action or examiner’s amendment regarding other matters is necessary, a description should be required in the Office action or entered by examiner’s amendment. If a response to an Office action requiring the description fails to include a description but resolves all other issues, and one of the special situations set out above applies, the examining attorney may do a "no-call" examiner’s amendment at that time. If all other issues have not been resolved, the requirement for a description must be maintained or made final, as appropriate.
For marks that include a design element of any kind that are not covered by the special situations set out above, the examining attorney must either issue a requirement for the description, or enter a description by examiner’s amendment, with the prior approval of the applicant. Once a description of the mark is received in response to an Office action or through an examiner’s amendment, the examining attorney must follow the procedures set forth in TMEP §§808.03(a) and 808.03(c)–808.03(d) (i.e., determine whether the description is accurate and complete, accurate and incomplete, or inaccurate, and proceed accordingly).