TMEP 1904.02(k): Drawings and Descriptions of the Mark

This is the October 2015 Edition of the TMEP

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1904.02(k)    Drawings and Descriptions of the Mark

Though the mark in a §66(a) application may not be amended, the applicant must comply with the United States requirements regarding drawings of the mark. 15 U.S.C. §1141h(a); 37 C.F.R. §§2.52, 7.25(a).

If the drawing does not meet U.S. requirements (e.g., due to the improper inclusion of the federal registration symbol ® or the unacceptable reproductive quality of the image), the examining attorney will require a substitute drawing. Furthermore, if the reproduction of the mark in the international registration consists of multiple renditions of a three-dimensional mark, the applicant will be required to either: (1) comply with the United States requirement to depict the mark in a single rendition, 37 C.F.R. §2.52(b)(2); or (2) petition the Director to waive this requirement. See TMEP Chapter 1700 regarding petitions, and TMEP §807.10 regarding drawings of three-dimensional marks.

If the international registration contains no color claim, but there is a color drawing in the international registration, the applicant must either: (1) submit a claim of the color(s) featured in the mark and describe their location; or (2) state for the record that no claim of color is made with respect to the international registration, and submit a black-and-white reproduction of the same mark depicted in the international registration. See TMEP §807.07(b). If the international registration contains a color claim and/or color location statement, but it is incorrect, incomplete, or inconsistent with the color(s) shown on the drawing, the color claim and/or the color location statement must be corrected to conform to the color(s) depicted on the drawing. See TMEP §§807.07(a)–(a)(ii), 807.07(c).

A §66(a) applicant must also comply with U.S. requirements regarding descriptions of the mark. 37 C.F.R. §§2.37, 2.52(b)(5), 7.25(a).

With respect to sound marks and other non-visual marks, if the international registration contains a visual depiction of some kind, such as a musical staff corresponding to the notes of a sound mark, the applicant will be required to comply with the United States requirements for a detailed description of the mark. See TMEP §807.09.