When color is claimed as a feature of the mark, the applicant must submit a color claim that identifies each color and a separate color location statement describing where each color appears in the mark. 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a)–807.07(a)(ii). The applicant must claim all colors shown in the mark; the applicant cannot claim color for some elements of the mark and not others. See id. For example, when the drawing includes solid black lettering as well as elements in other colors, the applicant must claim the color black as a feature of the mark and include reference to the black lettering in the color location statement. The applicant may not state that solid black lettering represents all colors, or that it represents the particular color of the label, product, packaging, advertisement, website, or other specimen on which the mark appears at any given time.
If color is claimed as a feature of the mark, the drawing may include black, white, and/or gray used in two ways: (1) as claimed features of the mark; and/or (2) as a means 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 on a product or package; to represent shading or stippling; to depict depth or three-dimensional shape; or to indicate areas that are not part of the mark, such as background or transparent areas. See TMEP §§807.08, 808.01(b).
The terms "background" and "transparent areas" refer to the white or black portions of the drawing which are not part of the mark, but appear or will appear in the particular color of the label, product, packaging, advertisement, website, or other acceptable specimen on which the mark is or will be displayed. The applicant may not claim that the background or transparent areas represent all colors or that they represent the particular color of the label, product, packaging, advertisement, website, or other specimen on which the mark appears at any given time.
If the applicant claims color as a feature of the mark, the examining attorney must require the applicant to:
These statement(s) may be submitted in either an amendment to the application or by an examiner's amendment. The examining attorney must ensure that the statement(s) is entered into the Trademark database. The statement(s) will be included on the registration certificate.
The only exception to the requirement to claim or explain any black, white, and/or gray shown on the drawing is that, if the background of the drawing is white and it is clear that the white background is not part of the mark, no explanation of the white background is required. For example, if the drawing depicts the letters "ABC" in solid blue on a white background, or depicts a solid purple and green flower on a white background, no statement about the white background is required. On the other hand, if the shape of each of the letters "ABC" is outlined in blue with an enclosed white interior, or if the purple and green flower is enclosed in a green or black rectangle, square, or circle with a white interior, the applicant must explain the purpose of the interior white areas on the drawing.
If the drawing includes black, white, gray tones, gray shading, and/or gray stippling, and also includes other colors (e.g., red, turquoise, and beige), and the color claim does not include the black/white/gray, the examining attorney must require the applicant to either: (1) add the black/white/gray to the color claim and to the color location statement; or (2) if appropriate, add a statement that "Thein the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark."
Drawing must match the specimen of use. The drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods/services, as shown by the specimen. 37 C.F.R. §2.51(a)–(b); see 37 C.F.R. §2.72(a)(1), (b)(1); TMEP §§807.12(a)–807.12(a)(iii).
For example, if the drawing shows a red flower and the letters XYZ in the color black, the specimen must show the mark in the same colors. If the specimen depicts the lettering in a color other than solid black (e.g., green), the applicant must: (1) submit an amended drawing that depicts the lettering in the color shown on the specimen, if the amendment would not materially alter the mark; and (2) amend the color claim and the color location statement to match the new drawing, e.g., replace the word "black" with the word "green." Alternatively, the applicant may submit a substitute specimen showing use of the mark in the colors depicted on the drawing, or, if deleting the colors from the drawing would not materially alter the mark, the applicant may delete the color claim and substitute a black-and-white drawing for the color drawing. 37 C.F.R. §2.72.
If the applicant claims any color as a feature of the mark in the foreign registration, the applicant must claim the same color(s) in the U.S. application. If the foreign registration includes a color claim and also includes black, white, and/or gray that is not claimed as a feature of the mark, the applicant must state that the black/white/gray in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark. See 37 C.F.R. §§2.51(c), 2.72(c)(1); TMEP §§807.12(b), 1011.01.
In applications under §44, the drawing of the mark, including any color claim, must match the mark in the foreign registration. See 37 C.F.R. §2.51(c). An applicant under §44 who is claiming color in the U.S. application must state for the record that the foreign registration includes a claim of color, unless the foreign registration clearly indicates that color is a feature of the registered mark. The statement that the foreign registration includes a claim of color will not be included on the U.S. registration certificate.
If the applicant claims color as a feature of the mark, and the drawing also includes black, white, and/or gray that is not mentioned in the international registration color claim, the applicant must either: (1) claim the black/white/gray as color(s) in the U.S. application and describe the location of the black/white/gray; or (2) state that the black/white/gray on the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark.
If an applicant submits a black-and-white drawing that is lined for color (see TMEP §808.01(b)), or if the applicant submits a black-and-white drawing with an application that includes a color claim, the examining attorney must require the applicant to submit a color drawing, a claim that color(s) is a feature of the mark, and a separate statement naming the color(s) and describing where the color(s) appears on the mark. See TMEP §§807.07(a)–807.07(a)(ii). If, however, the examining attorney determines that the color is a non-material element of the drawing, the applicant may instead be given the option of submitting a black-and-white drawing that is not lined for color, or deleting the color claim in the written application, whichever is applicable.
If an applicant submits a black-and-white drawing that is not lined for color, and there is no color claim in the written application, generally the applicant cannot substitute a color drawing and claim color, unless the examining attorney determines that the color is a non-material element of the drawing.
If the applicant submits a black-and-white drawing that contains gray or stippling that produces gray tones or the notation grayscale in reference to the drawing, and the word "No" appears in the "Color Mark" field in a TEAS Standard or TEAS Plus application, or in the "Mark in Color" field in a §66(a) application, no inquiry is required. Similarly, if an applicant submits a black-and-white drawing and a description of the mark that references black, white, and/or gray, and the applicant states that color is not claimed as a feature of the mark, no further inquiry is required and no change to the description of the mark is required.
When a mark contains stippling, it is generally not necessary to require a statement that the stippling represents shading or is a feature of the mark, unless the examining attorney believes such a statement is necessary to accurately describe the mark. See TMEP §808.01(b) regarding stippling statements.
For permitted paper filings (see TMEP §301.01), if the applicant submits a black-and-white drawing on paper and the application is silent about whether color is claimed as a feature of the mark, the presence of any gray in the drawing creates an ambiguity as to whether black, white, and/or gray are claimed as a feature of the mark. Similarly, if an applicant submits a black-and-white drawing on paper and the application is silent about whether color is claimed as a feature of the mark, the inclusion of a description of the mark that refers to black/white/gray creates an ambiguity as to whether black/white/gray is claimed as a feature of the mark. In these cases, the examining attorney must require that the applicant submit one of the following:
Prior to November 2, 2003, the USPTO did not accept color drawings. An applicant who wanted to show color in a mark was required to submit a black-and-white drawing, with a statement describing the color(s) and where they appeared on the mark. Alternatively, the applicant could use a color lining system that previously appeared in 37 C.F.R. §2.52 but was deleted from the rule effective October 30, 1999. See 64 Fed. Reg. 48900, 48903 (Sept. 8, 1999) and 1226 TMOG 103, 106 (Sept. 28, 1999).
In applications filed prior to November 2, 2003, it was presumed that color was claimed as a feature of the mark, unless the applicant specifically stated that no claim was made to color, or that color was not claimed as a feature of the mark.
For applications filed before November 2, 2003, unless the application included a statement that color was not claimed as a feature of the mark (or that no claim was made to color), the applicant may voluntarily submit a color drawing under the current rules, with the requisite color claim and a separate description of the color(s) in the mark.
A registrant may substitute a color drawing for a black-and-white drawing in a registration where color is claimed, by filing a §7 request to amend the registration certificate. The request must include: (1) a color drawing; (2) a color claim; (3) a description of where the color(s) appear(s) in the mark; and (4) the fee required by 37 C.F.R. §2.6. See TMEP §1609.02(e).
If necessary to adequately depict the commercial impression 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 particular goods, packaging, or advertising on which the mark appears. The applicant must also use broken lines to show any other 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 describe the mark and explain the purpose of the broken lines.
Occasionally, the position of the mark on the goods, packaging, or a label may be a feature of the mark. If necessary to adequately depict the commercial impression of the mark, the examining attorney may require the applicant to submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken- or dotted-line representation of the particular goods, packaging, or advertising on which the mark appears. The applicant must also use broken or dotted lines to show any other matter not claimed as part of the mark. For any drawing using broken or dotted 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 or dotted lines, for example, by indicating that the matter shown by the broken or dotted 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).
The drawing should clearly define the matter the applicant claims as its mark. See In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980) ; In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983).
See TMEP §1202.02(c)(i) regarding drawings of three-dimensional trade dress marks.
Because the matter depicted in broken or dotted lines is not part of the mark, it should not be considered in determining likelihood of confusion. In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378 (TTAB 2006). See TMEP §1202.02(c)(i) regarding drawings in trade dress applications.
An applicant is not required to submit a drawing if the mark consists only of a sound, a scent, or other completely non-visual matter. For these types of marks, the applicant must submit a detailed description of the mark.
The applicant is not required to submit a drawing if the mark consists solely of a sound (e.g., music or words and music), a scent, or other completely non-visual matter. For a sound mark, the applicant should select "Sound Mark" as the mark type. For a scent mark, the applicant should indicate that the mark type is "Standard Character" and should type "Scent Mark" in the "Standard Character" field. In a permitted paper application, the applicant should clearly indicate that the mark is a "NON-VISUAL MARK." The USPTO will enter the proper mark drawing code when the application is processed. Non-visual marks are coded under mark drawing code 6 in the automated search system. See TMEP §807.18 regarding mark drawing codes.
If the applicant selects "Sound Mark" as the mark type , the applicant will be required to indicate whether it is attaching an audio file. The applicant should submit an audio reproduction of any sound mark. See 37 C.F.R. §2.61(b). The purpose of this reproduction is to supplement and clarify the description of the mark. The reproduction should contain only the mark itself; it is not meant to be a specimen. The reproduction must be in an electronic file in .wav, .wmv, .wma, .mp3, .mpg, or .avi format and should not exceed 5 MB in size because TEAS cannot accommodate larger files.
For permitted paper filings, reproductions of sound marks must be submitted on compact discs ("CDs"), digital video discs ("DVDs"), videotapes, or audiotapes. See id. The applicant should clearly and explicitly indicate that the reproduction of the mark contained on the disc or tape is meant to supplement the mark description and that it should not be discarded.
If the mark comprises both visual and non-visual matter, the applicant must submit a drawing depicting the visual matter, and include a description of the non-visual matter in the "Description of the Mark" field.
The applicant must also submit a detailed description of the mark for all non-visual marks. 37 C.F.R. §2.52(e). If the mark comprises music or words set to music, the applicant should generally submit the musical score sheet music to supplement or clarify the description of the mark. See 37 C.F.R. §2.61(b). In an application or response, the musical score sheet music should be attached as a .jpg or .pdf file in the "Additional Statements" section of the form, under "Miscellaneous Statements."
See TMEP §§904.03(f) and 1202.15 regarding specimens for sound marks, and TMEP §904.03(m) regarding specimens for scent and flavor marks.
If the mark has three-dimensional features, the drawing must depict a single rendition of the mark, and the applicant must indicate that the mark is three-dimensional.
If the mark is three-dimensional, the drawing should present a single rendition of the mark in three dimensions. See In re Schaefer Marine, Inc., 223 USPQ 170, 171 n.1 (TTAB 1984). The applicant must include a description of the mark indicating that the mark is three-dimensional. 37 C.F.R. §2.52(b)(2)
Under 37 C.F.R. §2.52(b)(2), the applicant is required to submit a drawing that depicts a single rendition of the mark. See TMEP §1202.02(c)(iv). 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, and TMEP §1202.02(c)(ii) regarding information required in descriptions for trade dress marks comprising product design or product packaging, or trade dress for services.
If the mark has motion, the drawing may depict a single point in the movement, or the drawing may depict up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark. The applicant must also describe the mark.
If the mark includes motion (i.e., a repetitive motion of short duration) as a feature, the applicant may submit a drawing that depicts a single point in the movement, or the applicant may submit a square drawing that contains up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark. Id. The applicant must also submit a detailed written description of the mark. Id; see TMEP §808.02. The description of the mark "must reflect what is displayed in [the a]pplicant’s drawing" and "indicate that the trade dress [is] three-dimensional or whether, in the alternative, the trade dress is a two dimensional mark that could be interpreted as three-dimensional." In re The Ride, LLC, 2020 USPQ2d 39644, at *2-3 (TTAB 2020).
See TMEP §904.03(l) regarding specimens for motion marks.
For applications under §1 of the Trademark Act, the drawing must always be compared to the specimen of record to determine whether they match. See 37 C.F.R. §2.51(a)–(b). The first step is to analyze whether the mark in the drawing is a substantially exact representation of the mark shown on the specimen.
In an application filed under §1(a) of the Trademark Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods/services, as shown by the specimen. 37 C.F.R. §2.51(a); see 37 C.F.R. §2.72(a)(1).
In an application filed under §1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods/services and as actually used, as shown by the specimen filed with the amendment to allege use or statement of use. 37 C.F.R. §2.51(b); see 37 C.F.R. §2.72(b)(1).
If the mark in the drawing is not a substantially exact representation of the mark shown in the specimen, the second step is to determine whether an amendment of the drawing to agree with the mark shown on the specimen would be a material alteration of the mark in the original drawing. If the answer is "no," the applicant must submit either an amended drawing or a substitute specimen. If the answer is "yes," the applicant must submit a substitute specimen and no amendment of the drawing is allowed. See 37 C.F.R. §2.72(a)–(b). See TMEP §§807.14–807.14(f) for information about material alteration.
Extraneous matter shown on the specimen that is not part of the mark (e.g., the symbols "TM" or "SM," the registration notice ®, the copyright notice ©, or informational matter such as net weight or contents) may not be shown on the drawing. See TMEP §807.14(a) regarding deletion of non-distinctive matter.
See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a mark with a "phantom" or changeable element, and §1215.02(c) regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a domain name mark.
In assessing discrepancies in punctuation between the mark on the drawing and the mark shown on the specimen, the general rules are that:
See TMEP §1215.08(c) regarding the addition or deletion of a "." in marks for domain registry operator or domain name registration services.
If a drawing contains punctuation, the elements of punctuation are presumed to be part of the mark. Thus, if there is punctuation in the mark on the drawing, the punctuation must also appear on the specimen or the drawing is not considered to be a substantially exact representation of the mark as used in commerce. If deletion of the punctuation from the drawing does not alter the commercial impression, the drawing may be amended to match the specimen. If deletion of the punctuation changes the commercial impression, i.e., constitutes a material alteration, the applicant must submit a substitute specimen to match the original drawing. See TMEP §§807.14–807.14(f) regarding material alteration.
For example, if the mark on the drawing is "ALL THE KING’S MEN," and the mark on the specimen is ALL THE KING’S MEN, the mark on the drawing is not a substantially exact representation of the mark as used in commerce. Since the deletion of the quotation marks from the drawing would not change the commercial impression of the mark, the drawing may be amended to match the specimen. The applicant has the option to either: (1) amend the drawing to delete the punctuation; or (2) submit a new specimen showing use of the mark with the punctuation.
However, if the mark on the drawing is GOT MILK?, and the mark on the specimen is GOT MILK, the deletion of the punctuation from the drawing would constitute a material alteration because it changes the commercial impression from a question to a statement. Therefore, the drawing may not be amended and the applicant must submit a substitute specimen that includes punctuation in order for the drawing to be a substantially exact representation.
Generally, extraneous, non-distinctive punctuation marks that appear on the specimen may be omitted from the drawing, if the matter on the drawing makes an impression separate and apart from the punctuation marks that appear on the specimen. See TMEP §807.12(d). For example, if the mark on the drawing is HOME RUN, and the mark on the specimen is "HOME RUN," the drawing is considered a substantially exact representation of the mark as used on the specimen. The quotation marks on the specimen are nondistinctive and do not change the commercial impression of the mark, so it is unnecessary to amend the drawing or require a substitute specimen. In re MN Apparel LLC, 2021 USPQ2d 535, at *12 (TTAB 2021) ("The mere addition of a comma to the mark in the specimen is not sufficient to create a different commercial impression from the mark on the drawing page.")
However, in rare instances, the punctuation marks on the specimen result in a mark with a different commercial impression than the mark shown on the drawing. For example, if the mark on the specimen is PREGNANT?, and the mark on the drawing is PREGNANT, the mark on the drawing is not a substantially exact representation of the mark as actually used. The question mark on the specimen transforms the word PREGNANT from a mere statement to a question, and, therefore, changes the commercial impression of the mark. Moreover, the drawing cannot be amended to add the punctuation because it would result in a material alteration. Therefore, the applicant must submit a new specimen showing the mark without the punctuation. In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1751-52 (TTAB 2012) (finding the mark GOT STRAPS on the drawing not a substantially exact representation of the mark GOT STRAPS? on the specimen). See TMEP §§807.14–807.14(f).
In a §44 application, the drawing of the mark must be "a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the applicant’s country of origin." 37 C.F.R. §2.51(c). The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is stricter than the standard used to determine whether a specimen supports use of a mark in an application under §1 of the Trademark Act. See TMEP §1011.01. The drawing in the U.S. application must display the entire mark as registered in the foreign country. The applicant may not limit the mark to part of the mark shown in the foreign registration, even if it creates a separate and distinct commercial impression.
Exception: Non-material informational matter that appears on the foreign registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.
When the mark on the drawing does not agree with the mark on the foreign registration, the applicant cannot amend the drawing of the mark if the amendment would materially alter the mark on the original drawing. 37 C.F.R. §2.72(c); TMEP §§807.14–807.14(f), 1011.01.
If the U.S. application has a black-and-white drawing, and color appears in the foreign registration, or color is claimed or described as a feature of the mark in the foreign registration, the mark in the U.S. drawing does not agree with the mark in the foreign registration. In general, the black-and-white drawing in the U.S. application should be amended to agree with the color mark in the foreign registration, unless the proposed amendment would be a material alteration.
If the U.S. application has a color drawing, the same colors must be part of the mark in the foreign registration. Whether the drawing in the U.S. application can be amended depends upon whether the amendment would be a material alteration of the mark. If the U.S. application has a color drawing but the drawing in the foreign registration is in black and white with no color claim, the applicant must either: (1) amend the drawing in the U.S. application to a black-and-white drawing, if the amendment would not be a material alteration; or (2) delete the §44 basis and proceed under §1.
See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the foreign registration in an application that seeks registration of a mark with a "phantom" or changeable element.
In an application under §66(a) of the Trademark Act, 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). 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. It is, therefore, unnecessary for the examining attorney to compare the drawing in the §66(a) application with the reproduction in the international registration. See TMEP §§1904–1904.15 for further information about §66(a) applications.
The mark in a §66(a) application cannot be amended. TMEP §§807.13(b), 1904.02(j).
Exception: Non-material informational matter that appears on the international registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.
Because the drawing requirements in other countries often differ from those in the United States, an ambiguity may arise when the international registration contains no color claim, but the reproduction of the mark in the international registration is in color. In such cases, the §66(a) applicant must either: (1) make a color claim to clarify that the depicted color(s) is a feature of the mark and submit a description of the location of the color(s); or (2) submit a black-and-white reproduction of the mark. See 37 C.F.R. §2.52(b)(1). This is not considered to be an amendment of the mark, but rather a clarification of the ambiguity.
If the USPTO receives a notification of correction to a mark in the International Register from the IB, the examining attorney must conduct a new search of the mark as corrected and, if appropriate, issue a provisional refusal of the request for extension of protection as corrected on all applicable grounds. The USPTO must notify the IB of the provisional refusal within 18 months of notification of the correction. See TMEP §1904.03(f) regarding notifications of corrections to the International Register. If the reproduction of the corrected mark features color, the applicant will be required to comply with the requirements for a color drawing. 37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a)–807.07(a)(ii).
