T.M.E.P. § 807.07
Color in the Mark
Executive summary:
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807.07 Color in the Mark
37 C.F.R. 2.52(b)(1). Color marks. 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 an applicant uses color in a mark, the applicant generally has the option of applying to register the mark either in black and white or in the color(s) shown on the specimen. If the applicant applies to register the mark in black and white, the applicant must submit a black and white drawing. If the applicant applies to register the mark in color, the applicant must submit a color drawing.
See TMEP §§1202.05 et seq. regarding the registration of marks that consist solely of one or more colors used on particular objects.
807.07(a) Requirements for Color Drawings
For applications filed on or after November 2, 2003, the Office does not accept black and white drawings with a color claim, or drawings that show color by use of lining patterns. 37 C.F.R. 2.52(b)(1).
Color drawings must be accompanied by the following: (1) a color claim naming the color(s) that are a feature of the mark; and (2) a separate statement describing where the color(s) appear on the mark. 37 C.F.R. 2.52(b)(1). 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 statement describing the color(s).
807.07(a)(i) Color Must Be Claimed as a Feature of the Mark
If an applicant submits a color drawing, the applicant must claim color as a feature of the mark. 37 C.F.R. 2.52(b)(1). A properly worded color claim would read as follows:
The color(s)
If the color claim is unclear or ambiguous, the examining attorney must require clarification.
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.
807.07(a)(ii) Applicant Must Name and Describe Colors
If an applicant submits a color drawing, the applicant must name the colors and describe where they appear on the mark. 37 C.F.R. 2.52(b)(1). A properly worded description would read as follows:
The color(s)
If the description is unclear or ambiguous, the examining attorney must require clarification.
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.
The applicant may supplement the required written description of the color contained in a mark with a reference to a commercial color identification system. The Office does not endorse or recommend any one commercial color identification system. The written description of the mark must include a generic description of the color, in addition to the reference to the commercial color identification system.
See TMEP §1202.05(e) for additional information regarding the requirement for a written explanation of a mark consisting solely of color.
807.07(b) Color Drawings Filed Without a Color Claim
If the applicant submits a color drawing but does not include a color claim in the written application, and if the color is a material element of the mark, the examining attorney must require the applicant to submit a color claim naming the color(s) that are a feature of the mark, and a separate statement describing where the color(s) appear on the mark.
In an application under §1 or §44, if the examining attorney determines that the 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 §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). Therefore, if the mark in the international registration is in color, the applicant may not substitute a black and white drawing. The applicant must submit a color claim.
807.07(c) Color Drawings Filed With an Incorrect Color Claim
Where the color shown in the drawing page in a paper application, or in the digitized image of the drawing page in a TEAS application, is inconsistent with the color claimed in the written application (e.g., the mark is shown in blue in the drawing, but the color claimed is orange), then 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.
807.07(d) Black and White Drawings and Color Claims
If an applicant submits a black and white drawing that is lined for color (see TMEP §808.01(d)) , or if the applicant submits a black and white drawing with an application that includes a color claim, the examining attorney must require that applicant submit a color drawing, a color claim naming the color(s) that are a feature of the mark, and a separate statement describing where the color(s) appear on the mark. 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.
807.07(e) Gray Tones in Drawings
The Office now accepts drawings that contain the color gray, or stippling that produces gray tones. Unless an applicant claims the color gray, color will not be considered to be a feature of the mark and the drawing will be processed as a black and white drawing. If the applicant claims the color gray, the drawing will be processed like any other color drawing (see TMEP §§807.07(a) through (c)), and the color claim will be printed in the Official Gazette and on the certificate of registration.
If the drawing contains the color gray, or stippling that produces gray tones, and the record is unclear as to whether applicant is claiming color, the examining attorney must require the applicant to clarify the ambiguity. Even if the applicant is not claiming color, the Office will accept a drawing that contains gray tones or stippling. A mark with gray tones or stippling will not be considered a color drawing unless the applicant claims color.
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(d) regarding stippling statements.
807.07(f) Drawings in Applications Filed Before November 2, 2003
In applications filed before November 2, 2003, if the drawing of record does not meet the requirements for claiming color under the old rules, the examining attorney must require a new drawing. In response, the applicant may submit either (1) a black and white drawing that meets the requirements for claiming color under the old rules, or (2) a color drawing with the required statements for claiming color under the new rules ( TMEP §807.07(a)).
If the drawing in an application filed before November 2, 2003 is acceptable under the old rules, no action by the examining attorney is required. However, 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 new rules, with the requisite color claim and a separate description of the color(s) in the mark. Voluntary amendments are not permitted in the period between approval for publication and issuance of a registration or notice of allowance, or in the period between approval for registration and issuance of the registration.
Similarly, 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 appears in the mark; and (4) the fee required by 37 C.F.R. 2.6. See TMEP §1609.02(d).