TMEP 807.12(a): Applications Under §1 of the Trademark Act

This is the October 2015 Edition of the TMEP

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807.12(a)    Applications Under §1 of the Trademark Act

For applications under §1 of the Trademark Act, the drawing must always be compared to the specimen of record to determine whether they match. See 37 C.F.R. §2.51(a–(b). The first step is to analyze whether the mark in the drawing is a substantially exact representation of the mark shown on the specimen.

In an application filed under §1(a) of the Trademark Act, 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); see 37 C.F.R. §2.72(a)(1).

In an application filed under §1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods/services and as actually used, as shown by the specimen filed with the amendment to allege use or statement of use. 37 C.F.R. §2.51(b); see 37 C.F.R. §2.72(b)(1).

If the mark in the drawing is not a substantially exact representation of the mark shown in the specimen, the second step is to determine whether an amendment of the drawing to agree with the mark shown on the specimen would be a material alteration of the mark in the original drawing. If the answer is “no,” the applicant must submit either an amended drawing or a substitute specimen. If the answer is “yes,” the applicant must submit a substitute specimen and no amendment of the drawing is allowed. See 37 C.F.R. §2.72(a)–(b). See TMEP §§807.14–807.14(f) for information about material alteration.

Extraneous matter shown on the specimen that is not part of the mark (e.g., the symbols “TM” or “SM,” the registration notice ®, the copyright notice ©, or informational matter such as net weight or contents) may not be shown on the drawing. See TMEP §807.14(a) regarding deletion of non-distinctive matter.

See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a mark with a “phantom” or changeable element, and TMEP §1215.02(c) regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a domain name mark.