United States Patent and Trademark Office OG Notices: 20 Nov 2007
Department of Commerce
United States Patent and Trademark Office
37 CFR Part 2
Docket No. PTO-T-2007-0035
RIN 0651-AC17
Changes in the Requirement for a Description of the
Mark in Trademark Applications
AGENCY: United States Patent and Trademark Office, Commerce
ACTION: Notice of proposed rule
SUMMARY: The United States Patent and Trademark Office ("USPTO") proposes
to amend the Rules of Practice in Trademark Cases to require a description
of the mark in all applications to register a mark not in standard
characters.
DATES: Comments must be received by [60 days from the date of publication
in the Federal Register] to ensure consideration.
ADDRESSES: The Office prefers that comments be submitted via electronic
mail message to TMDescriptionRequirements@uspto.gov. Written comments may
also be submitted by mail to Commissioner for Trademarks, P.O. Box 1451,
Alexandria, VA 22313-1451, attention Cynthia C. Lynch; or by hand delivery
to the Trademark Assistance Center, Concourse Level, James Madison
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention
Cynthia C. Lynch; or by electronic mail message via the Federal eRulemaking
Portal. See the Federal eRulemaking Portal Web site
(http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal.
The comments will be available for public inspection on the Office's web
site at http://www.uspto.gov. and will also be available at the Office of
the Commissioner for Trademarks, Madison East, Tenth Floor, 600 Dulany
Street, Alexandria, Virginia.
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, by telephone at
(571) 272-8742.
SUPPLEMENTARY INFORMATION
The USPTO proposes to amend 37 CFR 2.37 to require trademark applicants
to include a description of the mark for all marks not in standard
characters and to make conforming amendments to 37 CFR 2.32(a) and
2.52(b)(5). The requirement will facilitate greater accuracy and efficiency
in design coding and in pseudo-mark data determinations. Therefore, the
revised rules will promote more accurate and complete searchability of
marks in the USPTO records.
The current rule regarding descriptions of marks provides that a
description "may be included in the application and must be included if
required by the trademark examining attorney." 37 CFR 2.37. Because the
USPTO has concluded that the description contributes to the accuracy of
design coding and pseudo-mark determinations that are made before the
application reaches the examining attorney, and ultimately to more complete
searches, the USPTO proposes a rule change to facilitate initial design
coding and to make available a description of the mark in all files where
it is likely to be useful. Thus, any applicant whose mark is not in
standard characters would be required to provide a description of the mark
as an application requirement.
Trademarks may consist of words, designs, or both. Both the USPTO and
the public search USPTO trademark records for purposes of assessing
likelihood of confusion with proposed trademarks. Words in trademarks
generally can be searched directly. In contrast, designs in trademarks must
be classified based on the elements they contain (e.g., stars or trees), so
that they can be searched. In its electronic systems, the USPTO applies a
coding system based on the Vienna Agreement Establishing an International
Classification of the Figurative Elements of Marks. Codes established under
the system are assigned to trademark applications that contain designs at
the time they are filed. The design classification system used is unique to
the USPTO, and is applied only to marks with design elements.
Design coding of marks in new applications initially occurs before the
applications are assigned to examining attorneys. When the mark in an
application contains a design element, USPTO employees or contractors in
the Pre-Examination section designate and apply the appropriate design
codes for the mark. To improve searchability, the USPTO has also created a
pseudo-mark field for some marks in the electronic database. The
pseudo-mark field shows the literal equivalent of a pictorial
representation in a design mark, or spellings that are similar or
phonetically equivalent to wording in a word mark. The USPTO has engaged in
a variety of efforts to improve the accuracy of its design code and
pseudo-mark data, and continues to explore options for further improvement.
The USPTO has determined that requiring the applicant to describe any
design elements proves very useful for determining the proper design codes
and pseudo-mark data. For example, the applicant's description of its
design elements can clarify ambiguous design elements or "double entendres"
created by design elements, and will help to ensure that the design coding
and pseudo-mark determinations have been comprehensive.
DISCUSSION OF SPECIFIC RULES
The Office proposes to revise 37 CFR 2.37 and to make conforming
amendments to 37 C.F.R. 2.32(a) and 2.52(b)(5). These rules concern
descriptions of marks in trademark applications (37 CFR 2.37), the
requirements for a complete application (37 CFR 2.32), and the requirements
for drawings (37 CFR 2.52). Trademark Rule 2.37 currently provides that a
description of the mark may be mandated by the trademark examining
attorney. The proposed revisions make the inclusion of a description
mandatory for all applications where the mark is not in standard
characters. The remainder of 2.37 would not change, in that a description
may be included for standard character mark applications, and must be
included if the trademark examining attorney so requires. The conforming
amendments make the inclusion of a description a requirement for a complete
application and remove discretion from applicants as to whether a
description is necessary for non-standard character marks.
RULE MAKING REQUIREMENTS
Executive Order 13132: This rule does not contain policies with
federalism implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule has been determined not to be
significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Regulatory Flexibility Act: As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553 (or any other
law), neither a regulatory flexibility analysis nor a certification under
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are required. See 5
U.S.C. 603.
Paperwork Reduction Act: This notice involves information collection
requirements which are subject to review by the Office of Management and
Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). The collections of information involved in this notice have been
reviewed and previously approved by OMB under OMB control numbers
0651-0009 and 0651-0050. This notice proposes to amend 37 C.F.R. 2.37 to
require a description of the mark in all applications to register a mark
not in standard characters. The USPTO is not resubmitting information
collection packages to OMB for its review and approval because the changes
in this proposed rule do not affect the information collection requirements
associated with OMB control numbers 0651-0009 and 0651-0050.
The estimated annual reporting burden for OMB control number 0651-0009
Applications for Trademark Registration is 253,801 responses and 74,593
burden hours. The estimated time per response ranges from 15 to 23 minutes,
depending on the nature of the information. The time for reviewing
instructions, gathering and maintaining the data needed, and completing and
reviewing the collection of information is included in the estimate. The
collection is approved through September of 2008.
The estimated annual reporting burden for OMB control number 0651-0050
Electronic Response to Office Action and Preliminary Amendment Forms is
117,400 responses and 19,958 burden hours. The estimated time per response
is 10 minutes. The time for reviewing instructions, gathering and
maintaining the data needed, and completing and reviewing the collection of
information is included in the estimate. The collection is approved through
April of 2009.
Comments are invited on: (1) whether the collection of information is
necessary for proper performance of the functions of the agency; (2) the
accuracy of the agency's estimate of the burden; (3) ways to enhance the
quality, utility, and clarity of the information to be collected; and (4)
ways to minimize the burden of the collection of information to
respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden, to
the Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451
(Attn: Cynthia C. Lynch), and to the Office of Information and Regulatory
Affairs, Office of Management and Budget, New Executive Office Building,
Room 10202, 725 17th Street, N.W., Washington, D.C. 20503 (Attn: Desk
Officer for the Patent and Trademark Office).
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to comply
with a collection of information subject to the requirements of the
Paperwork Reduction Act unless that collection of information displays a
currently valid OMB control number.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
For the reasons stated, 37 CFR Part 2 is proposed to be amended as
follows:
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR Part 2 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
2. Amend 2.37 to read as follows:
2.37 Description of mark
A description of the mark must be included if the mark is not in
standard characters. In an application where the mark is in standard
characters, a description may be included and must be included if required
by the trademark examining attorney.
3. Amend 2.32(a)(8) to read as follows:
2.32 Requirements for a complete application
(a) The application must be in English and include the following:
***
(8) If the mark is not in standard characters, a description of the
mark.
*****
4. Amend 2.52(b)(5) to read as follows:
2.52 Types of drawings and format for drawings
*****
(b) ***
(5) Description of mark. A description of the mark must be included.
*****
JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office