807.01 Drawing Must Show Only One Mark
Under 37 C.F.R. §2.21(a)(3), an applicant must submit “a clear drawing of the mark” to receive a filing date. An application that includes two or more drawings displaying materially different marks does not meet this requirement. Two marks are considered to be materially different if the substitution of one for the other would be a material alteration of the mark, within the meaning of 37 C.F.R. §2.72 (see TMEP §§807.14–807.14(f)).
Accordingly, if an applicant submits two or more drawing pages, the application is denied a filing date, because the applicant has not met the requirement for a clear drawing of the mark. See TMEP §202.01 for further information. See also Humanoids Grp. v. Rogan, 375 F.3d 301, 307-309, 71 USPQ2d 1745, 1750-1751 (4th Cir. 2004). However, if an applicant submits a separate drawing page in a paper application showing a mark, and a different mark appears in the written application, the application will receive a filing date, and the drawing page will control for purposes of determining what the mark is. The USPTO will disregard the mark in the written application. In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063, 1064 (Dir USPTO 2001). Similarly, if an applicant enters a standard character mark, or attaches a digitized image of a mark, in the “Mark” field of a TEAS application, and a different mark appears in another field, the application will receive a filing date, and the mark entered in the “Mark” field will control for purposes of determining what the mark is.
The USPTO will not deny a filing date if the drawing shows spatially separate elements. If the applicant submits an application where the “drawing” is composed of multiple elements on a separate page, multiple elements on a single digitized image, or multiple elements in a separate area of the body of the application, the applicant has met the requirement of 37 C.F.R. §2.21(a)(3) for a clear drawing of the mark. The examining attorney must determine whether the matter presented for registration is a single mark projecting a unitary commercial impression. See TMEP §807.12(d) regarding “mutilation” or incomplete representation of the mark.
If the examining attorney determines that spatially separate elements constitute two or more different marks, the examining attorney must refuse registration under §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground that the applicant seeks registration of more than one mark. See In re Hayes, 62 USPQ2d 1443, 1445-1446 (TTAB 2002); In re Elvis Presley Enters., Inc., 50 USPQ2d 1632 (TTAB 1999); In re Walker-Home Petroleum, Inc., 229 USPQ 773, 775-776 (TTAB 1985); In re Jordan Indus., Inc., 210 USPQ 158, 159-160 (TTAB 1980); In re Audi NSU Auto Union AG, 197 USPQ 649, 650-651 (TTAB 1977); In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974); In re Robertson Photo-Mechanix, Inc., 163 USPQ 298, 299 (TTAB 1969). This refusal may apply in any application, regardless of the filing basis.
When registration is refused because the matter presented on the drawing does not constitute a single mark, the application filing fee will not be refunded. The applicant may amend the drawing if the amendment does not materially alter the mark, or may submit arguments that the matter on the drawing does in fact constitute a single mark. See TMEP §§807.14–807.14(f) regarding material alteration, and TMEP §807.14(a) regarding deletion of matter from the drawing.
Under 37 C.F.R. §2.52(b)(2), even if registration is sought for a three-dimensional mark, the applicant must submit a drawing depicting a single rendition of the mark. See TMEP §807.10. If the applicant submits a drawing that depicts a three-dimensional mark in multiple renditions, the examining attorney will require a substitute drawing depicting the mark in a single rendition. 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.
If the mark is duplicated in some form on the drawing (e.g., a typed word and a stylized display of the same word), this is generally not considered to be two materially different marks, and deletion of one of the marks is permitted.
See TMEP §§1214–1214.04 regarding the refusal of registration of a mark with a “phantom” element on the ground that it includes more than one mark in a single application.
See also In re Upper Deck Co., 59 USPQ2d 1688, 1691 (TTAB 2001) (holding that a hologram used on trading cards in varying shapes, sizes, contents, and positions constitutes more than one “device” as contemplated by §45 of the Trademark Act).