| Trademark Examination |
Referenced Items (470, 471, 472, 473, 474, 475, 476, 477, 478, 479, 480) |
(474) 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: Final rule
SUMMARY: The United States Patent and Trademark Office ("USPTO") amends
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.
This requirement will facilitate more accurate and comprehensive design
coding and pseudo-mark data determinations, and therefore will promote
better searchability of marks within the USPTO trademark database. The
USPTO will maintain its practice of printing the description of a mark
the certificate of registration only when the USPTO deems the description
necessary to clarify what is claimed in the mark.
DATES: This rule is effective [INSERT DATE 60 DAYS AFTER DATE OF
PUBLICATION IN THE FEDERAL REGISTER].
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the
Deputy Commissioner for Trademark Examination Policy, by telephone at
(571) 272-8742.
SUPPLEMENTARY INFORMATION
A notice of proposed rule making was published in the Federal Register
(72 FR 60609) on October 25, 2007, proposing 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 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. As explained in the earlier notice, the USPTO believes the
more expansive description requirement will facilitate greater accuracy
and efficiency in design coding and in pseudo-mark data determinations.
Therefore, the requirement will promote more accurate and comprehensive
searchability of marks in the USPTO database.
Trademarks may consist of words, designs, or both. Both the USPTO and
the public search USPTO trademark records to assess the 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 and pseudo-mark entries for new applications
initially occur before the applications are assigned to examining attorneys.
When the mark in an application contains a design element, the Pre-
Examination section designates and applies the appropriate design codes
for the mark. They also enter pseudo-mark data into an internal database
field to indicate 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. Design code and pseudo-mark data may subsequently
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be revised or supplemented by USPTO examining attorneys if appropriate.
Examining attorneys and the public use design codes to search for marks that
are likely to cause confusion with a proposed mark that consists of or
includes a particular design element(s). The pseudo-mark entries in the
USPTO databases allow likelihood of confusion searches for a particular word
or term to automatically retrieve phonetic equivalents or pictorial
equivalents that have been appropriately pseudo-marked.
The USPTO received five written submissions on the proposed changes,
from one intellectual property organization, two law firms, one attorney,
and one law student/intellectual property analyst. Three commenters
generally supported the proposed changes, one expressed some reservations,
and one opposed mandating descriptions, and instead suggested that they be
merely "encouraged."
Comment 1 - TEAS Forms
Several commenters who supported the proposed changes suggested that the
relevant Trademark Electronic Application System ("TEAS") forms be modified
to provide optional fields for design code and pseudo-mark suggestions. One
commenter requested clarification that the TEAS Plus and Madrid Protocol
TEAS forms would be updated to reflect the new rule change.
Response
The USPTO notes that although the TEAS forms themselves do not present
the option to suggest design codes, each applicant for a mark that includes
design elements receives a notice from the USPTO explaining design coding,
explicitly identifying the Vienna Classification design codes assigned to
the applicant's mark, and providing detailed instructions on how to request
supplements or revisions to the assigned codes. The USPTO has designated
internal and external e-mailboxes (TMDesignCodeComments@USPTO.GOV) for this
purpose, where input on design marks or pseudo-marks can also be provided,
and makes changes to initial coding and pseudo-mark designations where
appropriate. A notice announcing the procedure for submitting proposed
corrections was previously published in the USPTO's Official Gazette and is
posted on the USPTO web site. The USPTO believes this method of eliciting
applicant input is preferable because applicants unfamiliar with design
coding are better able to understand the concept by seeing the codes
already assigned by the USPTO. In the context of the initial application
filing on TEAS, explaining and requesting input on design codes or pseudo-
marks, without the ability to relate the concepts to the applicant's mark,
would likely prove unnecessarily confusing to many applicants.
As to updating TEAS forms to reflect the rule change, the USPTO notes
that the TEAS Plus form contains a mandatory field for a description of
the mark for any mark not in standard characters, as this is an application
requirement for TEAS Plus applications. Thus, the USPTO believes that no
updating of the TEAS Plus form is necessary. The regular TEAS initial
application form contains an optional field for a description of the mark,
and the form will be updated to show a "warning" that the description is an
application requirement for marks not in standard characters.
The TEAS forms for Madrid Protocol filings apply to outgoing applications
for international registration based on an application pending before or a
registration issued by the USPTO. A description of the mark is not
mandatory for all international applications for registrations of marks that
are not in standard characters. A description is mandatory only if there is
a description in the basic application or registration, and is not permitted
when there is no description in the basic application or registration. See
Trademark Manual of Examining Procedure (TMEP) section 1902.02(k). The
USPTO's international application form contains a field for supplying a
description of the mark, and already has an instruction that "If a
description of the mark appears in the basic application and/or registration,
enter the same description here. If no description is in the basic
application and/or registration, do not enter any description here."
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Therefore no modification of the form is deemed necessary. Incoming requests
for extension of protection of international registrations to the United
States under 15 U.S.C. 1141f are forwarded by the International Bureau of
the World Intellectual Property Organization, not on forms designed by the
USPTO.
Comment 2 - Potential Disagreement over Description, Design Coding, Pseudo-
Marks; Pendency Considerations
Several commenters sought clarification of the USPTO's policy and
procedure if an applicant and the USPTO examining attorney disagree over
the appropriate content of the description, or if there is disagreement
regarding the design coding or pseudo-mark data. One commenter suggested
that when the USPTO's interpretation of the mark differs from an applicant's
description of the mark (e.g., the applicant describes a design element as
an inverted V, while the USPTO views the element as a mountain), the
USPTO should enter design codes and pseudo-marks in accordance with both the
applicant's description and the USPTO's view. Were the USPTO to decline to
enter design codes or pseudo-marks in accordance with the applicant's
description, the commenter recommends that this determination be the subject
of an Office action, to allow the applicant an opportunity to address the
issue. Another commenter expressed concerns about the time and effort the
new requirement would impose on an examining attorney to examine and ensure
the sufficiency of the description.
Response
As an initial matter, the USPTO notes that the time needed for an
examining attorney's review for and of the description should be quite
minimal. If the examining attorney determines that the description is not
necessary to clarify what is claimed as the proposed mark, such that the
description will not be printed in the Trademark Official Gazette or on the
registration certificate, the examining attorney need not require amendment
or withdrawal of the description by the applicant, even if the descriptiom
is incomplete or is not artfully worded, so long as the description does not
misdescribe elements of the mark. In those cases, although the description
remains part of the record, the description will not be printed, and
prosecution of the application will not be unnecessarily prolonged to refine
the description or to resolve any disagreement as to the content of the
description. This is consistent with current practice. See TMEP section
808.03. This guideline for not printing descriptions also addresses another
commenter's concern that registrations would be more likely to issue with
surplusage or relatively useless description information. Registrations
will issue with printed descriptions only when the examining attorney has
made the express determination that the description is necessary to clarify
the nature of the mark.
If the examining attorney determines that the description will be
printed, the examining attorney must ensure that the description is
accurate and complete, such that all significant elements of the mark are
addressed in the description. In those cases, the examining attorney will
require amendment of the description if it is not accurate and complete.
As under current practice, such a requirement for amendment of the
description, when repeated or made final, could be challenged on appeal.
Similarly, even where the description is deemed unnecessary and will not
be printed, if the description blatantly misdescribes some element of the
mark, the examining attorney will require the applicant to amend or delete
the description, so that the inaccurate description does not remain part of
the record. Again, such a requirement, when repeated or made final, could
be the subject of an appeal.
Where the applicant fails to provide any description, the examining
attorney will require one, for compliance with the rule. The USPTO
concludes that the benefits to be achieved by requiring descriptions justify
lengthening prosecution of those cases in which applicants initially fail to
comply with the rule. One commenter suggested that in cases where the
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required description was omitted, the examining attorney provide the
description for "obvious" marks by an examiner's amendment, without the
prior authorization of the applicant. Currently, pursuant to TMEP section
707.02, the examining attorney may enter a mark description without prior
authorization by the applicant only where the record already contains an
informal indication of what the mark comprises, such as where application
papers refer to the mark as "a stylized golf ball design." In addition,
the USPTO will permit examining attorneys to enter a description by
examiner's amendment without prior authorization in situations where the
mark consists only of words in a stylized font, with no design element.
As with any examiner's amendment, a copy will be sent to the applicant or
applicant's attorney, who may object to the amendment. The USPTO declines
to further expand the use of examiner's amendments without prior
authorization to situations where the mark includes a design element. One
important objective of the expanded description requirement is to seek the
applicant's input on the characterization of the design elements;
permitting the entry of a description absent prior consultation undermines
this objective.
As to design coding and pseudo-mark entries in the USPTO database,
because both the USPTO and the public rely on these entries for effective
trademark searching, the USPTO retains the authority to make the ultimate
determination regarding their accuracy. However, the USPTO will include
all entries in accordance with the applicant's description of the mark, so
long as the applicant's description is supported by the drawing of the mark.
To promote accuracy and comprehensiveness in searchability, the USPTO would
prefer to be as comprehensive as possible with these entries, and will
therefore make entries consistent with the applicant's description except
where the USPTO finds no reasonable basis to do so. As distinguished from
descriptions, the design coding and pseudo-mark entries are administrative
matters that are not reflected on the registration certificate and do not
impact the scope of a registration.
Comment 3 and Response - Clarifications of Description-Related Practice
and Procedure
In response to several comments, the USPTO clarifies that no
identification of the name of the particular stylized font is required when
the mark includes a stylized font. Also in response to one comment, the
USPTO notes that the description requirement is an application requirement,
rather than one of the requirements for receiving a filing date, and the
USPTO therefore neither proposes nor makes an amendment to the list of
filing date requirements in 37 CFR § 2.21(a). For TEAS Plus applications,
the current filing requirement in 37 CFR § 2.22(a)(15) for a description if
the applied-for mark is not in standard characters remains unchanged.
Other commenters suggested that some guidelines regarding descriptions
would be useful. Accordingly, the USPTO is issuing an examination guide on
this subject, which will be incorporated into the next edition of the TMEP,
to provide additional guidance in this area. The examination guide will be
posted on the USPTO web site, at
http://www.uspto.gov/web/offices/tac/notices/notices.htm.
Another commenter suggested that the USPTO permit waiver of a required
description when accurate and appropriate design codes are entered into the
record. The USPTO believes the required description helps ensure that
accurate and appropriate design coding occurs. The USPTO notes that pursuant
to 37 CFR § 2.146, applicants may petition for a waiver of any non-statutory
requirement, but the waiver will be granted only in an extraordinary
situation, when justice requires and no other party is injured thereby.
Comment 4 - Legal Effect of Descriptions
Two commenters expressed concerns about the legal effects of the
expanded requirement of descriptions, with one commenter stating that mark
descriptions may be unduly restrictive or misleading, based on the applicant
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having a different impression of its own mark than does the public.
Another commenter cited the decision in In re Thrifty, 274 F.3d 1349
(Fed. Cir. 2001), where a trademark applicant's drawing showed the color
blue placed on a building, and the Court refused as an impermissible
material alteration of the mark an amendment describing the mark as the
color blue used in a variety of ways, such as on vehicle rental centers,
signs, vehicles, uniforms, and in other advertising and promotional
materials.
Response
For visual marks, the USPTO reiterates its position that "[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." TMEP section 808.02. Consistent with
Thrifty, the USPTO notes that amendments of mark descriptions would only be
prohibited in the unusual situation where the amended description differs
materially from the mark shown in the drawing (or described in the original
description, for non-visual marks where no drawing of the mark is required).
Otherwise, amendments would be freely allowed. For example, in cases where
an initial description does not address all the elements in the drawing,
an applicant could supplement the description to include the elements
of the drawing previously omitted from the description without running afoul
of the material alteration standard.
DISCUSSION OF SPECIFIC RULES
The Office revises 37 CFR § 2.37 and makes conforming amendments to 37
CFR §§ 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
revisions make the inclusion of a description mandatory for all applications
where the mark is not in standard characters. The remainder of § 2.37
remains unchanged, 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 making 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 making 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 were 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.) were 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 amends 37 CFR § 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
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to OMB for its review and approval because the changes in this 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.
Unfunded Mandates: The Unfunded Mandates Reform Act, at 2 U.S.C. 1532,
requires that agencies prepare an assessment of anticipated costs and
benefits before issuing any rule that may result in expenditure by State,
local, and tribal governments, in the aggregate, or by the private sector,
of $100 million or more (adjusted annually for inflation) in any given
year. This rule would have no such effect on State, local, and tribal
governments or the private sector.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
For the reasons stated in the preamble, the Patent and Trademark Office
amends 37 CFR part 2 to read 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. In § 2.32 add a new paragraph (a)(8) to read as follows:
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§ 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.
*****
3. Revise § 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.
4. In § 2.52, revise paragraph (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
[1329 TMOG 160]