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 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.

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 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 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.

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

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:

3. Revise § 2.37 to read as follows:

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