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USPTO Requiring Description of Marks Not in Standard Characters

By William F. Heinze

On March 14, 2008, the U.S. Patent and Trademark Office announced "Changes in the Requirement for a Description of the Mark in Trademark," which 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. 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. 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.

According to the new rule,

In response to several comments, the USPTO has clarified 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 o 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.

. . . For visual marks, the USPTO reiterates its position that "[a] description cnnot 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.

Full post as published by I/P Updates on March 17, 2008 (boomark / email).