TMEP 807.14(a): Removal or Deletion of Matter from Drawing

October 2017 Edition of the TMEP

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807.14(a)    Removal or Deletion of Matter from Drawing

An applicant may request deletions from the mark on the drawing, and the examining attorney may approve the request if he or she believes the deletions are appropriate and would not materially alter the mark. See 37 C.F.R. §2.72.

Deletion of matter from the mark can result in a material alteration. In re Dillard Dep't Stores, Inc., 33 USPQ2d 1052 (Comm’r Pats. 1993) (proposed deletion of highly stylized display features of mark IN•VEST•MENTS held to be a material alteration of a registered mark).  However, nondistinctive matter may be deleted, if it does not constitute a material alteration.  For example, the deletion of the generic name of the goods or services would not generally be considered a material alteration, unless it was so integrated into the mark that the deletion would alter the commercial impression.  In some circumstances, nondistinctive matter may be deleted if the overall commercial impression is not altered.  Also, deletions of matter determined to be unregistrable under §§2(a) or 2(b) of the Act, 15 U.S.C. §§1052(a)  or (b), are sometimes permissible. See TMEP §§1203–1203.03(c)(iii) regarding refusal under §2(a) of matter that is immoral, scandalous, or creates false suggestion of connection, and TMEP §§1204–1204.05 regarding refusal under §2(b) of marks that comprise flag, coat of arms, or other insignia of the United States, of any state or municipality, or of any foreign nation.

If a specimen shows that matter included on a drawing is not part of the mark, the examining attorney may require that such matter be deleted from the mark on the drawing, if the deletion would not materially alter the mark.  See In re Sazerac Co., 136 USPQ 607 (TTAB 1963) and cases cited therein.

The symbols "TM," "SM," and the registration notice ® must be deleted from the drawing.

Informational matter, such as net weight and volume statements, lists of contents, addresses, and similar matter, should also be deleted from the mark, unless it is truly part of a composite mark and the removal of this matter would alter the overall commercial impression.  If unregistrable matter, including informational matter and the name of the goods, is incorporated in a composite mark in such a way that its removal would change the commercial impression of the mark or make it unlikely to be recognized, the matter may remain on the drawing and be disclaimed.  See TMEP §1213.03(b) regarding disclaimer of such matter.  However, this type of matter rarely is part of a composite mark.

Functional matter that is part of an otherwise registrable three-dimensional trade dress mark may also be removed or deleted from the drawing by depicting that matter in broken or dotted lines.  Since functionality is an absolute bar to registration on the Principal Register or the Supplemental Register, features of a trade dress mark that are deemed functional under trademark law are never capable of acquiring trademark significance and are not registrable.  Therefore, such removal or deletion of the functional features generally will not be considered a material alteration of the mark, regardless of the filing basis of the application.  See TMEP §§1202.02(a)–(a)(viii) regarding functionality, and TMEP §1202.02(c)(i)(A) regarding functional matter on drawings in trade dress applications.

See TMEP §807.14(b) regarding addition or deletion of previously registered matter.