TMEP 807.07(d)(i): Applications Under §1

October 2017 Edition of the TMEP

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807.07(d)(i)    Applications Under §1

If the drawing includes black, white, gray tones, gray shading, and/or gray stippling, and also includes other colors (e.g., red, turquoise, and beige), and the color claim does not include the black/white/gray, the examining attorney must require the applicant to either: (1) add the black/white/gray to the color claim and to the color location statement; or (2) if appropriate, add a statement that "The <black/white/gray> in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark."

Drawing must match the specimen of use.  The drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods/services, as shown by the specimen. 37 C.F.R. §2.51(a)–(b); see 37 C.F.R. §2.72(a)(1), (b)(1); TMEP §§807.12(a)–807.12(a)(iii).

For example, if the drawing shows a red flower and the letters XYZ in the color black, the specimen must show the mark in the same colors.  If the specimen depicts the lettering in a color other than solid black (e.g., green), the applicant must: (1) submit an amended drawing that depicts the lettering in the color shown on the specimen, if the amendment would not materially alter the mark; and (2) amend the color claim and the color location statement to match the new drawing, e.g., replace the word "black" with the word "green."  Alternatively, the applicant may submit a substitute specimen showing use of the mark in the colors depicted on the drawing, or, if deleting the colors from the drawing would not materially alter the mark, the applicant may delete the color claim and substitute a black-and-white drawing for the color drawing. 37 C.F.R. §2.72.