808.02 Description Must Be Accurate and Concise
If a description of a mark is placed in the record, the description should state clearly and accurately what the mark comprises, and should not create a misleading impression by either positive statement or omission. Statements regarding how a mark is used (e.g., that the mark is not used in a particular color) are not appropriate and, if submitted, must not be printed on the registration certificate. See TMEP § 808.03(g).
The description should describe all significant aspects of the mark, including both literal elements and design elements. Insignificant features need not be included in a description.
When a mark includes a large number of elements, they are not all necessarily significant. For example, background design elements can sometimes be considered insignificant if they do not change the overall commercial impression of the mark. In addition, it may be unnecessary to describe the placement of repetitive literal or design elements within a mark, as long as the description generally characterizes them and explains that the elements are repeated. Similarly, when a mark contains a substantial number of design elements, it may only be necessary to generally state in the description those elements that capture the essence of the mark. Please note that because of the requirement to describe where colors appear in the mark, marks that include color will generally have a more detailed description. 37 C.F.R. §2.52(b)(1). See TMEP §§807.07(a)–807.07(a)(ii) regarding requirements for color drawings.
If a mark contains both wording and design features, the description should describe both aspects of the mark in order to be complete. The rare exception is for wording that is (1) not significant to the mark; and (2) would not be searched (e.g., purely informational matter such as product weight, lists of contents, and business addresses). The better – but not mandatory – practice with descriptions of non-standard character marks that include wording is to indicate that the wording is "in stylized font."
Generally, if the applicant has not made a color claim, the description of the mark should not mention color, because a reference to color in the description of a non-colored mark creates a misleading impression. See TMEP §§807.07–807.07(g) regarding color. However, in some cases, it may be appropriate to submit a black-and-white drawing and a description of the mark that refers to black, white, and/or gray if the applicant states that color is not claimed as a feature of the mark. See TMEP §§807.07(f)–807.07(f)(ii) regarding applications that include mark descriptions that refer to black, white, or gray when there is no corresponding color claim.
If a trademark or service mark that is registered to an entity other than the applicant is used in the description of the mark, the examining attorney must require that it be deleted and that generic wording be substituted. Generally, it is inappropriate to use a registered mark in a description, because the mark indicates origin in only one party and cannot be used to describe a mark used in connection with goods or services that originate in a party other than the registrant. Cf. Camloc Fastener Corp. v. Grant, 119 USPQ 264, 265, n.1 (TTAB 1958) (noting that if applicant prevailed in opposition proceeding, it would be required to delete registered mark from the identification of goods set forth in the application). This prohibition against use of third-party registered marks in descriptions includes the use of registered trademarks that designate type fonts, such as ARIAL (U.S. Registration No. 2270853) or TIMES NEW ROMAN (U.S. Registration No. 1340165). The use of these type-font designations in a description is not critical to an understanding of the mark, and therefore unnecessary for an accurate and complete description. However, registered marks designating commercial color identification systems, such as PANTONE (e.g., U.S. Registration No. 1003494), may appear in connection with a color identifier in the description of the mark, because greater precision in identifying the color may be critical in accurately describing the mark and such third-party use is an intended use of commercial color-identification-system terminology.
A description cannot be used to restrict the likely public perception of a mark. A mark’s meaning is based on the impression actually created by the mark in the minds of consumers, not on the impression that the applicant states the mark is intended to convey. However, an examining attorney may defer to the applicant’s phrasing of a description, so long as the description is accurate and complete. For example, if an element in a mark could reasonably be characterized in more than one way, the examining attorney should accept the applicant’s selection of one characterization over the other in the description.
The following are examples of descriptions containing an appropriate level of detail:
The mark consists of a group of children holding hands.
Note: The description would be incomplete if it merely stated that the mark consisted of children; however, it is not necessary to describe the individual details of each child.
The mark consists of a red background; the stylized word "HOSPITAL" in white letters outlined in black with the letter "S" in the form of a dollar sign and letter "L" in the form of a cast; a man with red hair in a green gown with an orange and silver stethoscope and silver headband mirror; man wearing a blue cap, gown and mask with silver scissors; silver medical tree with white, pink, and gold intravenous pouch, fluid and tube; gray and gold crutch; nurse with yellow hair wearing pink clothing and brown clip board; orange and black scale with an orange man wearing purple pants and orange robe; nurse with yellow hair and white clothing pushing a wheelchair with a man in green clothing with white cast and gold cane; white and blue bed pan; yellow and black buildings and white signs with stylized words "EMERGENCY HOSPITAL" in black, and green vegetation; white and pink emergency vehicle with purple tires; a green air tank, orange stretcher, green golf club bag with white balls and pink clubs; nurse with yellow hair and blue clothing holding a white syringe with pink fluid; and an orange man dressed in blue with a white and red thermometer.
Note: This level of detail is necessary because the description must incorporate the color location statement ( see TMEP §807.07(a)(ii).
The mark consists of the stylized word "HOSPITAL" with the letter "S" in the form of a dollar sign and letter "L" in the form of a cast surrounded by a border containing a variety of images relating to a hospital including highly stylized images of doctors, nurses, patients, hospital equipment, an ambulance and building design containing the wording "EMERGENCY HOSPITAL".
Note: Since the mark is not in color, it is not necessary to describe every element of the mark. Instead, due to the large number of elements in the mark, it is only necessary to describe the wording in the mark and generally characterize the background elements.
The mark consists of a group of stylized people each in the shape of a lowercase letter "E" and a fanciful dog also in the shape of a lowercase letter "E".
Note: The description would be incomplete if it did not indicate that the figures are in the shape of a lowercase letter "E"; however, it is not necessary to describe the individual details or placement of each figure.
The mark consists of the stylized wording "BETSTONE" on a background design.
Note: The description would be incomplete if it did not indicate that the mark consists of more than wording; however, it is not necessary to specifically identify a nondescript common geometric carrier.
The mark consists of Chinese characters and the stylized wording "M ITCHELL".
Note: It is not necessary to include in the description of the mark the translation or transliteration of the Chinese characters. Though these elements would be searched, they are provided in the translation/transliteration statement.
The mark consists of an oval design with the stylized wording "OUTWIT OUTPLAY" and "OUTLAST", the design of a stylized jungle containing a gorilla, elephants, and snakes and the stylized wording "SURVIVOR GABON EARTH’S LAST EDEN" within the oval.
Note: The description would be incomplete if it did not describe both the wording and design elements of the mark; however, it is not necessary to describe the placement of the elements within the oval.
See TMEP §808.03 regarding the examination procedure for descriptions.