Changes in the Requirement for a Description of the Mark in Trademark Applications, 13780-13784 [E8-5202]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 73, Number 51 (Friday, March 14, 2008)]
[Rules and Regulations]
[Pages 13780-13784]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E8-5202]


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DEPARTMENT OF COMMERCE

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.

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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

[[Page 13781]]

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 
on 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 May 13, 2008.

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 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.'' 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.

[[Page 13782]]

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 description 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 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 https://
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

[[Page 13783]]

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 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 Sec.  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.

Rulemaking 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 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, NW., 
Washington, DC 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 in 37 CFR Part 2

    Administrative practice and procedure, Trademarks.

0
For the reasons stated in the preamble, the Patent and Trademark Office

[[Page 13784]]

amends 37 CFR part 2 to read as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
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.


0
2. In Sec.  2.32 add a new paragraph (a)(8) to read as follows:


Sec.  2.32  Requirements for a complete application

    (a) * * *
    (8) If the mark is not in standard characters, a description of the 
mark.
* * * * *
0
3. Revise Sec.  2.37 to read as follows:


Sec.  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.

0
4. In Sec.  2.52 revise paragraph (b)(5) to read as follows:


Sec.  2.52  Types of drawings and format for drawings

* * * * *
    (b) * * *
    (5) Description of mark. A description of the mark must be 
included.
* * * * *

    Dated: March 10, 2008.
Jon W. Dudas,
Director of the United States Patent and Trademark Office, Under 
Secretary of Commerce for Intellectual Property.
[FR Doc. E8-5202 Filed 3-13-08; 8:45 am]
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