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), (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.
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 U.S. 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.
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).
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. 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 Guide to International Registration, 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." Guide to International Registration, B.II.07.45. See TMEP §807.01 regarding multiple marks and §§1214–1214.04 regarding phantom marks.
Prior to November 2, 2003, "standard character" drawings were known as "typed" drawings. The mark on a typed drawing page had to be typed entirely in capital letters. A typed drawing is the legal equivalent of a standard character drawing.
Applicants who seek to register a mark that includes a two or three-dimensional design; color; and/or words, letters, or numbers or the combination thereof in a particular font style or size must submit a special form drawing. The drawing should show the mark in black on a white background, unless the mark includes color.
* * * * *
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 publishing in the Trademark Official Gazette and for inclusion 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.
See TMEP §807.18 concerning mark drawing codes.
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.
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 submit drawings within these parameters.
If an applicant is filing a standard character drawing, the applicant must enter the mark in the "Mark" 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).
The characters entered in the appropriate data field in the TEAS application or response forms 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.
As noted in TMEP §807.05(a), when an applicant files an application for a standard character mark, 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 Trademark 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.
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 in the electronic application. See TMEP §807.05(c) regarding the 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. Generally, stylized marks with no claim of color are depicted in black on a white background. It is also acceptable to depict the mark in white on a black background when the application indicates that the mark is not in color. 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.
A paper drawing must meet the requirements of §2.54.
The drawing must meet the requirements of §2.52. In addition, in a paper submission, the drawing should:
Paper drawings must meet the requirements of 37 C.F.R. §§2.52, 2.54.
The USPTO will only accept paper drawings in limited circumstances. See 37 C.F.R §§2.21(c), 2.23(c), 2.147. See TMEP §301.01 regarding the limited exceptions when paper submissions may be submitted.
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.
Paper and Format. The drawing should:
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).
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).
If the mark includes color, the drawing must show the mark in color, and the applicant must name the color(s), describe where the color(s) appear on the mark, and submit a claim that the color(s) is a feature of 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)-(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)-(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)–(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.
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. 37 C.F.R. §2.52(b)(1). 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. Id. 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.
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)
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.
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." 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
.
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.
Example – The application includes a statement in the "Miscellaneous" field that refers to the mark as a blue, red, and yellow ball and includes an accurate and properly worded color claim listing all colors in the mark, but omits the color yellow from the description of the mark. The examining attorney may enter an amendment of the description to accurately reflect all colors in the mark.
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.
If the applicant submits a color drawing but does not include a color claim in the 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)–(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 U.S.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 U.S. drawing requirements. See 37 C.F.R. §2.52(b).
When the color shown on the digitized image of the drawing in a TEAS application, or on the drawing page of a permitted paper 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.
