808.03 Examination Procedure for Descriptions
After having determined that a description of the mark is required because the mark is not in standard characters, the examining attorney must then consider whether the description should be printed in the Official Gazette and on the registration certificate. Accurate and complete descriptions may always be printed. In other situations, the decision to print – and to modify the description so that it is appropriate for printing – depends on whether, in view of the nature or drawing of the particular mark in question, a description is necessary to clarify the mark for the public.
For example, a description must always be printed if:
- (1) The mark is three-dimensional, or a configuration of the goods or packaging (see TMEP §§807.10, 1202.02(c)(ii));
- (2) The drawing includes broken lines to show position or placement or to indicate a portion of the product or packaging that is not part of the mark (see TMEP §§807.08, 1202.02(c)(ii));
- (3) The mark includes color (see TMEP §§807.07(a), 1202.05(e));
- (4) The mark includes motion (see TMEP §807.11); or
- (5) The mark is a sound, scent, or other non-visual mark (see TMEP §807.09).
- (6) The mark consists of a repeating pattern (see TMEP §1202.09(b)).
In rare instances, a description must be printed when the mark consists of characters from the standard character set, but the characters are displayed in a manner that affects the meaning or significantly contributes to the overall commercial impression of the mark, for example, emoticons such as :) or :(. Note that a standard character claim is not acceptable where the characters form shapes or designs, such as emoticons (TMEP §807.03(c)).
If the examining attorney determines that a description provided by the applicant will not be printed, notice to the applicant is not required. The examining attorney must either enter a Note to the File in the record stating that the description should not be printed or issue an examiner’s amendment stating that the description will not be printed. Generally, the examining attorney may use either option, but a Note to the File should be used where the examining attorney will issue an Office action regarding other matters. An examiner’s amendment without the prior approval of the applicant (see TMEP §707.02) may be used where it is unnecessary to issue an Office action or a regular examiner’s amendment regarding other matters.
The examining attorney must then either: (1) delete the mark description from the “Description” field in the relevant Trademark database; or (2) send the examiner’s amendment or an e-mail instruction (where only a Note to the File was entered) to the LIE for appropriate action.
The foregoing procedures ensure that a description not intended for printing will not be printed. They further ensure that at the publication review stage, the Note to the File or examiner’s amendment reflects the determination not to print.
The following sections explain how to handle various scenarios relating to the description requirement.