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

October 2017 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. A §66(a) application will normally indicate whether there is a standard character claim in the underlying international registration. The international registration will include such a claim if the basic application and/or registration that forms the basis of the international registration also includes such a claim. However, due to differences in requirements for standard character claims in the different countries where basic applications are filed and basic registrations issued, there may be times when the mark in the international registration and corresponding U.S. §66(a) application does not include a standard character claim even though the mark appears to be in standard characters.

In such cases, the applicant may assert a standard character claim in a §66(a) application if the mark drawing complies with the USPTO’s requirements for a standard character drawing under 37 C.F.R. §2.52(a), and the mark in the basic application and/or registration that forms the basis for the international registration is the legal equivalent of a standard character mark under the laws of the country of the basic application and/or registration. Although a mark in a §66(a) application may generally not be amended, submitting a standard character claim under these circumstances is not considered an amendment of the mark. TMEP §§807.13(b), 1904.02(j), (k); see 15 U.S.C. §1141h(a); 37 C.F.R. §§2.52(a), 7.25(a).

To assert a standard character claim under these circumstances, the applicant must submit (1) an affirmative statement that, under the laws of the country of the basic application and/or registration, the basic application and/or registration includes, and thus the international registration includes, the legal equivalent of a standard character claim, and (2) a standard character claim (i.e., The mark consists of standard characters without claim to any particular font style, size, or color.) ( see TMEP §807.03(a)). If the basic application and/or registration does not indicate that the mark is in standard characters (or the legal equivalent), the mark in the international registration and the corresponding drawing in the §66(a) application will be considered in special form and any U.S. registration that issues will be limited to the particular appearance and text style shown in the drawing.

If an Office action is otherwise necessary, an examining attorney may provide an advisory to the §66(a) applicant that the drawing of the mark meets the requirements for a standard character drawing under 37 C.F.R. §2.52(a), but there is no standard character claim in the U.S. application. This advisory should include an explanation that a standard character claim may be added to the U.S. application if, under the laws of the country of the basic application and/or registration, the basic application and/or registration includes the legal equivalent of a standard character claim.

The applicant may not add a standard character claim unless the mark in the §66(a) application meets the U. S. requirements for a standard character drawing in 37 C.F.R. §2.52(a) ( see TMEP §§807.03(a), (b)).

Alternatively, if the international registration indicates that the mark is in standard characters, but the drawing includes elements that are not in the USPTO's standard character set ( see TMEP §807.03(b), the examining attorney must require deletion of the standard character claim even though 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 [mark] protection is sought."  Para. B.II.07.45.  See TMEP §807.01 regarding multiple marks and §§1214–1214.04 regarding phantom marks.