TMEP 808.03(g): Unacceptable Statements in Mark Descriptions

This is the October 2015 Edition of the TMEP

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808.03(g)    Unacceptable Statements in Mark Descriptions

A statement that purports to limit a mark by excluding color(s) or other features that do not appear in a mark is not appropriate for inclusion in a description of a mark. Statements regarding any purported “exclusion” usually feature a limitation on the mark, often in an attempt to satisfy third parties that have infringement concerns. In some cases, the applicant has a written agreement with a potential opposer that addresses this issue. However, descriptions are solely to be used to describe the mark shown in the drawing and are not to be used to describe how the mark does not and will not appear. See TMEP §808.02.

Although these additional restrictive statements are uncommon, when they do appear the facts are generally as follows. The mark features a design and color is not claimed as a feature of the mark. The description of the mark is amended by the applicant to include a reference to a color or colors that the mark will not comprise. This type of statement is inappropriate and must be deleted from the description. For example, the following type of statement must not be included in a description of a mark: “The application and any registration resulting from the application exclude the color purple within or as part of the (design element) in the mark.”

Thus, when the applicant has not made a color claim, the description of the mark must not mention color(s), because reference to color in the description of a non-color mark creates a misleading impression. TMEP §§807.07, 808.02.

Accordingly, the description may not be used to state any limitations as to how a mark does not and will not appear. Any such statements must be deleted from the description if it is determined that the description needs to be printed. TMEP §§808.02, 808.03. Although applicants may include such restrictive statements in the application record, they are not appropriate for the registration certificate. If it is determined that the description does not need to be printed, the description does not need to be amended to delete the restrictive statement unless some part of the description is inaccurate, in which case the restrictive statement must be deleted. TMEP §808.03(d).