TMEP 807.07(b): Color Drawings Filed Without a Color Claim

October 2017 Edition of the TMEP

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807.07(b)    Color Drawings Filed Without a Color Claim

If the applicant submits a color drawing but does not include a color claim in the written application, and if the color is a material element of the mark, the examining attorney must require the applicant to submit a claim that color(s) is/are a feature of the mark, and a separate color location statement in the "Description of the Mark" field naming the color(s) and specifying where the color(s) appear(s) on the mark. 37 C.F.R §2.52(b)(1); TMEP §§807.07(a)–807.07(a)(ii).

In an application under §1, if the examining attorney determines that color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing.

In an application under §44, the drawing of the mark must be a substantially exact representation of the mark in the foreign registration. 37 C.F.R. §2.51(c); TMEP §807.12(b).  If a §44 application is based on a foreign registration that depicts the mark in color, but no claim of color is made in the registration document, the examining attorney must inquire whether the foreign registration includes the color(s) shown as claimed features of the mark.  The applicant must either: (1) submit an affirmative statement that color is a feature of the mark, and comply with the United States requirements for drawings in color; or (2) submit a statement that although the mark is registered in its country of origin featuring a color depiction of the mark, no claim of color is made in that registration.  If the examining attorney determines that color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing. See TMEP §§807.12(b), 1011.01, 1011.03.

In an application under §66(a), the drawing of the mark must be a substantially exact representation of the mark as it appears in the international registration. 37 C.F.R. §2.51(d); TMEP §807.12(c).  The IB will include a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States.  The mark in a §66(a) application cannot be amended. TMEP §807.13(b).   

Generally, when a mark is depicted in color, the §66(a) application will contain a claim of the colors featured in the mark.  However, because some countries accept color drawings of marks that do not include a color claim, there may be cases where no claim of color has been made in the international registration, but the reproduction of the mark contains color.  In these cases, the examining attorney should require the applicant to submit either: (1) a claim of the color(s) featured in the mark and a separate statement in the "Description of the Mark" field describing where the color(s) appear(s) in the mark; or (2) a statement that no claim of color is made with respect to the international registration, and a black-and-white reproduction of the same mark depicted in the international registration to comply with United States drawing requirements. See 37 C.F.R. §2.52(b).