904.02(c)    Additional Requirements

904.02(c)(i)    Other Materials Required for Examination

During examination, an examining attorney also has the discretion to request additional materials, under 37 C.F.R. §2.61(b), if necessary for proper examination of the mark. TMEP §814.  For example, if the mark is a configuration of the goods or of the container for the goods, the examining attorney may require additional reproductions showing the actual product or container.  Similarly, the examining attorney might require a complete copy of a publication in order to determine whether a mark is merely descriptive of the goods.  See TMEP §904.02(c)(iii) regarding marks used on publications.

904.02(c)(ii)    Specimens for Marks Comprising Color  

If color is a feature of the mark, or if the mark consists solely of color, the specimen must show use of the color.  37 C.F.R. §2.51; TMEP §807.12.  In such case, the applicant should submit color photographs of the specimen or other similar reproductions of the specimen in color so that the color is identifiable.

For all applications filed on or after November 2, 2003. 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); TMEP §807.07(a)(i).

If color is a feature of the mark and the applicant submits a specimen that is not in color or not in the appropriate color, the examining attorney will require the applicant to file a substitute specimen that shows use of the appropriate color(s).  See TMEP §904.05 regarding substitute specimens.

See also TMEP §1202.05(f) regarding specimens showing use of marks that consist solely of color.

904.02(c)(iii)    Specimens for Marks Used on Publications

An application for registration of a mark for publications is treated the same as any other application with respect to specimen requirements.  The USPTO does not require a complete copy of the publication or a title page in every case.  However, the examining attorney may require a copy of the publication under 37 C.F.R. §2.61(b)  if he or she believes it is necessary for proper examination.  For example, a copy of the publication might be necessary to determine whether a mark is merely descriptive of the goods.