After publication, an applicant may add or substitute a basis in an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, but only with the express permission of the Director, after consideration on petition. Republication will be required. The amendment of an application that is the subject of an inter partes proceeding before the Board is governed by §2.133(a).
In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after a mark has been published for opposition, the applicant must petition the Director to allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2). Amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by 37 C.F.R. §2.133(a) (see TBMP §514).
When granting a petition to amend the basis, the Director will restore jurisdiction to the examining attorney to consider the amendment, except in a §1(b) application in which the notice of allowance has issued. See TMEP §806.03(j)(ii) regarding amendment of the basis of a §1(b) application after issuance of a notice of allowance and before filing of statement of use.
If the examining attorney accepts the new basis, the mark must be republished to provide notice to third parties who may wish to oppose registration based on issues that arise in connection with the new basis. 37 C.F.R. §2.35(b)(2).
If the examining attorney does not accept the new basis, he or she will issue an Office action using standard examination procedures except in a §1(b) application in which a notice of allowance has issued and no statement of use has been filed. See TMEP §806.03(j)(ii) regarding amendment of the basis of a §1(b) application after issuance of a notice of allowance and before filing of statement of use.
Any petition to change the basis must be filed before issuance of the registration. To avoid the possible issuance of a registration without consideration of the petition, an applicant should submit the petition no later than six weeks after publication.
The Director will not grant a petition to amend the basis after publication if the amendment could substantially delay prosecution of the application. For example, the Director will deny petitions to amend the basis after publication in the following situations:
See TMEP §806.03(j)(i) regarding amendment of the basis in a §1(b) application between publication and issuance of a notice of allowance, and §806.03(j)(ii) regarding amendment of the basis in a §1(b) application after issuance of a notice of allowance and before filing of statement of use.
Petitions to amend the basis after publication are processed by the Office of Petitions, which is part of the Office of the Deputy Commissioner for Trademark Examination Policy.
An applicant who wants to add or substitute a §44(e) basis to a §1(b) application after publication must petition the Director to allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j). The applicant must submit a copy of the foreign registration (and an English translation, if necessary) with the petition. 37 C.F.R. §2.34(a)(3)(ii); TMEP §§ 1004.01, 1004.01(b). If the petition is granted, the mark must be republished. 37 C.F.R. §2.35(b)(2); TMEP § 806.03(j).
The petition must indicate whether applicant wants to delete or retain the §1(b) basis. The applicant has two options:
An applicant who wants to add or substitute a §44(e) basis in a §1(b) application after issuance of the notice of allowance and before filing a statement of use must file the "Petition to Change the Filing Basis After Publication" TEAS form to allow the examining attorney to consider the amendment. The applicant must submit a copy of the foreign registration (and an English translation, if necessary) with the petition. See 37 C.F.R. §2.34(a)(3)(ii); TMEP §§ 1004.01, 1004.01(b). If the petition is granted, the mark must be republished. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j).
The Director will not grant a petition to amend the basis to §44(e) after issuance of the notice of allowance and before the filing of a statement of use if the foreign registration does not include all of the classes covered by the §1(b) basis, unless the applicant concurrently files: (1) a request to divide out the goods/services/classes to which the amendment applies or (2) an amendment deleting the goods/services/classes not covered by the amendment. See 37 C.F.R. §2.87 and TMEP §§1110–1110.11 regarding requests to divide. Also, if it is otherwise necessary to amend the identification in the U.S. application to conform to the scope of the identification in the foreign registration, the applicant should submit the amendment with the petition to expedite processing.
The Director will not grant a petition to add §44(e) and retain the §1(b) basis after issuance of the notice of allowance unless a statement of use is filed with the petition.
Therefore, the applicant has three options:
If the petition is granted, the examining attorney will be instructed to examine the §44(e) basis in accordance with standard examination procedures. If the examining attorney accepts the §44(e) basis, the examining attorney must ensure that: (a) the notice of allowance is cancelled, (b) the §1(b) basis is deleted, (c) the foreign registration information is entered into the Trademark database, and (d) the application is scheduled for republication.
If the examining attorney does not accept the §44(e) basis, or if the foreign registration has expired or will expire within six months, the examining attorney is unable to issue an Office action since the notice of allowance is still pending. Therefore, the examining attorney will attempt to notify the applicant by telephone or email of the reasons why the amendment is unacceptable. The applicant may then (1) agree to delete the §1(b) basis so that the notice of allowance can be cancelled and an examiner's amendment and/or appropriate Office action regarding the requested basis amendment can be issued, (2) withdraw the request to amend the basis to §44(e), or (3) request that the amendment remain pending until a statement of use is filed. The examining attorney must also enter an appropriate Note to the File in the record that states the reason(s) why the amendment is not acceptable. If the examining attorney is unable to reach the applicant, no further action will be taken on the amendment until a statement of use is filed or the applicant contacts the examining attorney with a request to delete the §1(b) basis so an Office action can be issued.
See also 37 C.F.R. §2.77; TMEP §§1107–1107.01.
An applicant who wants to add or substitute a §44(e) basis after filing a statement of use must petition the Director to allow the examining attorney to consider the amendment. The applicant must submit a copy of the foreign registration (and an English translation, if necessary) with the petition. See 37 C.F.R. §2.34(a)(3)(ii); TMEP §§ 1004.01, 1004.01(b). If the petition is granted, the mark must be republished. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j).
While an applicant may not withdraw the statement of use (37 C.F.R. §2.88(f); TMEP §1109.17), the applicant may elect not to perfect the use basis and instead substitute §44(e). The statement of use, specimen(s), and any materials submitted with the statement of use will remain part of the record even if the §1(b) basis is deleted. See 37 C.F.R. §2.25.
If the examining attorney accepts the §44(e) basis and the applicant is not perfecting the statement of use, the examining attorney must ensure that: (a) the §1(b) basis is deleted, (b) the dates of use are deleted, (c) the foreign registration information is entered into the Trademark database, and (d) the mark is scheduled for republication. If the mark is not successfully opposed, a registration will issue.
If the examining attorney does not accept the §44(e) basis, the examining attorney will issue an Office action notifying the applicant of the reason(s) and address any additional issue(s) that arise during examination of the statement of use. If an Office action has already been issued, the examining attorney must issue a supplemental action, with a new three-month response period, notifying the applicant that the §44 basis is unacceptable. See TMEP §711.03 regarding supplemental Office actions. The examining attorney must indicate that the action is supplemental to the previous action and incorporate all outstanding issues by reference to the previous action. The applicant may choose to withdraw the request to amend the §44(e) basis.
Filing a petition to add or substitute a §44(e) basis does not relieve the applicant of the duty to file a response to an outstanding Office action or to take any other action required in an application. See TMEP §§711–711.03 regarding the deadline for response to an Office action. If the applicant has filed a petition to delete the §1(b) basis and substitute §44(e), but the petition has not yet been acted on, the applicant may respond to an outstanding refusal or requirement by informing the examining attorney that a petition has been filed to substitute §44(e). The applicant must also respond to any outstanding issues regarding the statement of use unless the applicant no longer intends to perfect the statement of use.
In a §66(a) application, the applicant may not change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a). See TMEP §§1904.09–1904.09(b) regarding transformation.
Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO. Such basis may not be added or substituted as a basis in an application originally filed under §1 or §44.
If an applicant claims more than one basis, the applicant may delete a basis at any time, before or after publication. 37 C.F.R. §2.35(b)(1). No petition to the Director is required to delete a basis from a multiple-basis application after publication. When the applicant deletes a basis, the applicant must also delete the goods/services/classes covered solely by that basis. 37 C.F.R. §2.35(b)(7).
If all of the goods/services/classes in an application are based on §1(b) and §44(e), the applicant may file a request to delete the §1(b) basis by amendment at any time, except as set forth below. 37 C.F.R. §2.35(b)(1). No petition to the Director is required to delete a §1(b) basis from a multiple-basis application after publication. To request to delete a §1(b) basis after publication or issuance of the notice of allowance, use the "Request to Delete §1(b) Basis, Intent-to-Use" TEAS form.
If the application has some goods/services/classes based solely on §1(b) and some goods/services/classes based solely on §1(a) or §44(e), and the applicant wants to delete the §1(b) goods/services/classes after publication or issuance of the notice of allowance, the applicant must submit a post-publication amendment requesting the deletion and that the application proceed to registration for the other goods/services/classes that are not based on §1(b). To request to delete the §1(b) goods/services/classes, use the "Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment" TEAS form. For further information on filing post-publication amendments, see TMEP §1505.
If a notice of allowance has issued, the request must be filed: (1) within six months of the issuance date of the notice of allowance, (2) within a previously granted extension of time to file a statement of use, or (3) between the filing date of the statement of use and the date on which the examining attorney approves the mark for registration. The ITU Unit will cancel the notice of allowance, and take the necessary steps to delete the §1(b) basis and schedule the issuance of the registration.
If an applicant properly claims §44(d) in addition to another basis, the applicant may elect not to perfect a §44(e) basis and still retain the §44(d) priority filing date. 37 C.F.R. §§2.35(b)(3) -(4); TMEP §§806.01(c), 806.02(f).
When a §44(d) applicant elects not to proceed to registration under §44(e), the USPTO does not delete the §44(d) priority claim from the Trademark database. Both the §44(d) priority claim and the other basis will remain in the Trademark database.
Sometimes, a §44(d) applicant who elects not to perfect a §44(e) basis will file an amendment "deleting" the §44 basis. In this situation, the USPTO will presume that the applicant wants to retain the priority claim, unless the applicant specifically states that it wants to delete the priority claim and instead rely on the actual filing date of the application in the United States.
If the applicant is not entitled to priority (e.g., because the United States application was not filed within six months of the foreign filing), the examining attorney must ensure that the priority claim is deleted from the Trademark database, and must conduct a new search of USPTO records for conflicting marks.
If an application claims more than one basis, the examining attorney must ensure that the record clearly and accurately shows which goods are covered by which basis before approving the application for publication for opposition or registration on the Supplemental Register. If there are any errors, the examining attorney must ensure that the Trademark database is corrected.
See TMEP § 806.02(a) for information regarding entering multiple bases in the Trademark database when the applicant asserts different bases for different classes, or different bases as to different goods or services within a class.
The drawing shows the mark sought to be registered. 37 C.F.R. §2.52. An application must include a clear drawing of the mark sought to be registered to receive a filing date, except applications seeking 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. See TMEP §807.05 regarding drawings in TEAS. Submitting a specimen showing how the mark is 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 public 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 https://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 §§807.04–807.04(b) for information about special form drawings. (Note: "Typed" drawings are only 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 is an image file of an illustrated rendering of the mark. However, an image file of 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.
Drawings must meet the requirements of 37 C.F.R. §§2.52 and 2.53 (see 37 C.F.R. §2.23(a); TMEP §§807.05–807.05(c)).
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 drawings of materially different marks, the application will be 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, in a permitted paper application (see TMEP §301.01), an applicant submits a separate drawing page showing a mark, and a different mark appears in the written portion of the application, and there are no other issues, 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 single digitized image (or multiple elements on the drawing page of a permitted paper 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, e.g., 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).
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 Trademark 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.
Applicants who seek to register words, letters, numbers, or any combination thereof without claim to any particular font style, size, or color must submit a standard character drawing that shows the mark in black on a white background. An applicant may submit a standard character drawing if:
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). See TMEP §807.05(a) regarding standard character claims in TEAS.
A standard character drawing must show the mark in black on a white background. An applicant may submit a standard character drawing if:
If the applicant files an application that includes a standard character claim, 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.
See 37 C.F.R. §2.52(a). This statement will be published in the Trademark Official Gazette and included on the certificate of registration.
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 https://www.uspto.gov/trademark/standard-character-set. 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 Guide to International Registration, B.II.07.44.
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 §104 regarding design codes.
Similarly, a standard character claim is not acceptable where the characters form shapes or designs, such as emoticons.
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.
