T.M.E.P. § 808.01
Guidelines for Requiring Description

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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808.01 Guidelines for Requiring Description

The examining attorney should require a description of the mark if:

• a significant element of a mark is unclear or ambiguous;

• the mark is three-dimensional, or a configuration of the goods or packaging ( TMEP §§807.10 and 1202.02(d)) ;

• the drawing includes broken lines to show placement or to indicate a portion of the product or packaging that is not part of the mark ( TMEP §§807.08 and 1202.02(d)) ;

• the mark includes color ( TMEP §§807.07(a) and 1202.05(e)) ;

• the mark includes motion ( TMEP §807.11) ; or

• the mark is a sound, scent or non-visual mark.

The applicant may not amend the description of the mark if the amendment is a material alteration of the mark on the drawing or description filed with the original application. 37 C.F.R. §§2.72. In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001). See TMEP §§807.14 et seq. regarding material alteration.

808.01(a) Letters and Numerals

If a mark is composed of easily recognized letters or numerals, it is not necessary to include a description of the letters or numerals, even if they are presented in an unusual or stylized form. "Describing" letters or numerals merely as being "in stylized form" or as being a "fanciful representation" adds nothing that cannot be observed directly. On the other hand, if letters or numerals of a mark are displayed in a manner that makes it difficult to ascertain what they are, then the examining attorney should require a description.

808.01(b) Designs or Figurative Elements

Designs or figurative elements generally do not require a description. Objects like trees, leaves and flowers, animals and people, buildings and scenery, manufactured products, etc., usually can be identified without explanation.

Marks with designs of symbols that are not well known should be described. Examples are symbols used in astrology; symbols representing mathematical, electrical or other scientific concepts; and legendary or historical symbols used to indicate ideas such as happiness, long life, etc. Designs that present an object in a way that makes it difficult to immediately identify the object should be described. Designs that represent an object that may not commonly be recognized (e.g., a representation of an electrical transformer or a geiger counter) should also be described.

Geometric designs do not have to be described.

Vague descriptions of marks, such as "a design of a two-element circle," should be avoided. Such wording does little to help explain the real nature of the design.

808.01(c) Meaning of Term in Mark

If it is unclear to the examining attorney whether a term in a mark has meaning in the relevant industry, the examining attorney should make an inquiry of the applicant and should also conduct independent research. If the examining attorney determines that the term is arbitrary or fanciful, this may be indicated in notes to the file. A statement that a term has no meaning should not be entered as a description of the mark. If such a statement is entered as a description of the mark, the examining attorney must ensure that the statement is deleted from the description of the mark field in TRAM, and enter an appropriate note to the file. The document containing the information deleted from TRAM will remain of record for informational purposes. See TMEP §808.03 regarding printing of descriptions of the mark.

See TMEP §§809 et seq. regarding translation and transliteration of non-English wording and non-Latin characters.

808.01(d) Lining and Stippling Statements for Drawings

Current Practice. For applications filed on or after November 2, 2003, the Office does not accept black and white drawings lined for color. 37 C.F.R. 2.52(b)(1); TMEP §807.07(a). Thus, the examining attorney should not require the applicant to enter a statement that the lining or 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 §§808.03 and 817 regarding printing of lining and stippling statements and other descriptions of the mark.

Previous Practice. Prior to October 30, 1999, an applicant who wanted to show color in a mark was required to use the Office's color lining system. The color lining system required applicants to line their drawings using certain patterns designated for certain colors, and to provide a color lining statement describing where the colors appeared. The color lining system was deleted from the rule effective October 30, 1999; however, during a transitional period between October 30, 1999 and November 2, 2003, the Office continued to accept drawings that showed color by using this lining system. See notice at 64 Fed. Reg. 48900, 48903 (Sept. 8, 1999) and 1226 TMOG 103, 106 (Sept. 28, 1999). When an applicant submitted a drawing that included lining that was a feature of the mark and was not intended to indicate color, the applicant was required to submit a statement to that effect, so the record would be clear as to what applicant was claiming as the mark. Similarly, when an applicant submitted a drawing that included stippling for shading purposes, the applicant was required to submit a statement to that effect.