TMEP 807.03(h): Drawings Where the Format Is Unclear

This is the October 2015 Edition of the TMEP

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807.03(h)    Drawings Where the Format Is Unclear

Section 1 Applications. When it is unclear from the record whether the submitted drawing was intended to be a standard character drawing, the examining attorney must contact the applicant for clarification. For example, clarification is needed if the font style used in the mark on the drawing does not match the font style used on the specimen and there is no standard character claim in the application, or if the applicant files a paper application in which the mark is printed or written by hand. If the mark is intended to be in standard characters, then the examining attorney must require that the applicant amend the application to include the standard character claim. This may be done by examiner’s amendment. Once the applicant submits this statement, the examining attorney must ensure that the mark drawing code is changed to 4 (see TMEP §807.18).

Section 44 Applications. In a §44 application, the applicant cannot claim standard characters unless the foreign registration also claims standard characters. See TMEP §807.03(f).

Section 66(a) Applications. In a §66(a) application, the request for extension of protection forwarded by the IB normally indicates whether there is a standard character claim in the international registration. However, due to differences in requirements for standard character claims in different countries, there may be situations where the mark in the international registration meets the USPTO’s requirements for a standard character claim, but no standard character claim is set forth in the international registration. If the international registration does not indicate the mark is in standard characters, and the applicant seeks to amend the §66(a) application to add a standard character claim, the examining attorney must contact the MPU Supervisor via e-mail for instructions on how to proceed. The applicant may not add a standard character claim unless the mark meets the United States requirements for a standard character claim, as set forth in 37 C.F.R. §2.52(a) (see TMEP §§807.03(a) and (b)).

Alternatively, if the international registration indicates that the mark is in standard characters, but the drawing includes elements that are not in the standard character set, the examining attorney must require deletion of the standard character claim even if the international registration indicates that the mark is in standard characters. See the IB’s Guide to International Registration, Para. B.II.07.44.

The Guide to International Registration provides that if an Office “considers that the mark is not in standard characters, it may issue a refusal, for example, on the ground that the international registration covers two marks (one in standard characters and one in special characters) or that it is simply not clear for what protection is sought.” Para. B.II.07.45. See TMEP §807.01 regarding multiple marks and §§1214–1214.04 regarding phantom marks.