| Trademarks > Examination Guide 05-06 |
|
|
|
Examination Guide 05-06
AMENDMENTS TO COLOR FEATURES OF MARKS
Issued December 4, 2006
III. MARKS THAT INCLUDE COLOR AND OTHER ELEMENTS
VI. DRAWINGS AND FOREIGN REGISTRATIONS
I. INTRODUCTIONThis examination guide sets forth guidelines to help determine when an amendment to a color feature in a mark is likely to result in a material alteration. Guidelines applicable to Section 44-based and Section 66(a)-based applications are addressed in Section VI. This examination guide supersedes the current practices set forth in the Trademark Manual of Examining Procedure (TMEP), 4th edition, to the extent that they are inconsistent with the policies herein.
Amendments that materially alter the character of the mark are prohibited. 37 C.F.R. §2.72. The rationale underlying this prohibition is that members of the public must have notice of marks for which registration is sought, to enable them to make informed decisions regarding their trademark rights, such as determinations about the availability of a trademark or whether to file an opposition.
The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition . 1If a proposed amendment to a color feature of a mark does not change the commercial impression of the mark, the amendment is unlikely to have an adverse impact on public notice. In such cases, the mark need not be republished, and the proposed amendment would not be deemed a material alteration.
Whenever a proposed color amendment is refused as a material alteration, the examining attorney must clearly explain why the proposed amendment changes the meaning or overall impression of the mark or impacts the likelihood of confusion analysis.
II. BLACK-AND-WHITE DRAWINGS
General Rule: The amendment of a black-and-white special form drawing to one claiming a color or colors as features of the mark generally does not constitute a material alteration.
If a mark is initially depicted in a black-and-white special form drawing in which no color is claimed, the drawing is presumed to contemplate the use of the mark in any color, without limitation. 2Thus, an applicant's submitted specimen of use of the mark in any color would support the owner's use of the mark in commerce and serve as a valid basis for registration. The amendment of the black-and-white drawing to one claiming a particular color as a feature of the mark is therefore a restriction or limitation of the applicant's rights. The public has been put on notice that if a mark appears in a black-and-white drawing, without any claim of color as a feature of the mark, the applicant's use of the mark may be in any color or color combination.
III. MARKS THAT INCLUDE COLOR AND OTHER ELEMENTS
This section only concerns marks that include color as well as other elements and not color marks, which consist exclusively of color. See Section IV regarding color marks.
The extent to which color contributes to the commercial impression created by a mark is often determined by the type of mark in question, i.e., word mark, design mark or trade dress. In some cases, color may play only an incidental or insignificant part in creating the commercial impression of a mark, such as the color lettering of a word mark. In other cases, color is the only feature of the mark that creates a commercial impression, such as where the mark consists only of color(s) applied to the goods or their packaging or to articles used in conducting services. The ultimate issue to consider is whether the proposed color amendment sufficiently alters the commercial impression of the mark to adversely impact public notice.
Word marks may appear as stylized marks in color lettering. With the possible exception of generic wording as discussed below, the literal portions of word marks are likely to be the dominant portions that create the greatest commercial impression. 3In most cases, the color in the lettering is unlikely to have a significant impact on the commercial impression created by the mark. For example, the fact that two otherwise dissimilar words may appear in identical color lettering is unlikely to result in a finding that the marks are confusingly similar.
2. Exception to the General Rule for Word Marks: Generic terms
Generic terms are incapable of functioning as marks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register. However, if the generic wording appears in color lettering, the color portion may be capable of functioning as a source indicator. 4With respect to such generic word marks, the color element of the wording is likely to be the more dominant portion in creating the commercial impression of the mark. Therefore, in cases where the entire literal portion is generic, a proposed amendment to the color portion of the word mark would generally be a material alteration.
In a color design mark, the design portion is likely to be the most dominant portion of the mark in creating a commercial impression. While the color portion is part of the mark, it only appears in the context of the design and is not a separable element. The color portion is therefore less likely than the design portion to play a significant role in likelihood of confusion or trademark selection considerations. For example, the fact that two different designs, such as a red hat design and a red boat design, may appear in identical colors is unlikely to result in a finding of likelihood of confusion. In contrast, if two boat designs are identical in stylization, it is likely that the designs would be held to be confusingly similar regardless of any differences in their respective colors.
a. Color impacts the meaning or significance of the mark
An amendment that causes the mark to have a new meaning or significance in the context of the goods or services is likely to be a material alteration. For example, the amendment of a blue colored drop for “spring water,” which looks like a rain drop, to a red drop, which looks like blood, would probably be a material alteration because the change in the color of the drop has altered the meaning or commercial impression of the mark. As another example, an amendment of a rainbow design, consisting of an arc with a spectrum of colors, to a black or solid-colored arc, would be a material alteration regardless of the goods or services because the amended mark is just an arc and is no longer identifiable as a rainbow.
b. Color is the dominant portion of the mark
Generally, if the color portion to be amended constitutes the dominant or most significant part of the entire mark, it becomes more likely that the proposed color amendment is a material alteration. For example, if the design mark consists solely of a common geometric shape, the color element is likely to be the dominant element of the mark. As a result, amending the color of a common geometric shape is likely to be a material alteration of such a mark.
Other factors to consider in assessing the dominance of the color element of the mark can include the size or prominence of the color design or graphic element to be amended in proportion to the rest of the mark. For example, if it is clear that the mark consists of the overall color scheme of a product's trade dress, such as the product package or container, an amendment to a particular color element that is small or insignificant in proportion to the entire mark is unlikely to be a material alteration since it is unlikely to adversely impact the likelihood of confusion analysis with other marks. Conversely, an amendment to a color element that is large in proportion to the entire mark or is a dominant element of the overall color scheme is more likely to be a material alteration. For example, if a mark consists solely of the color scheme or pattern of a package or container that is equally divided into two colors, amending one or both colors is more likely to be a material alteration.
As is the case with all marks, the fundamental inquiry is whether the proposed color amendment to a design changes the overall commercial impression of the mark and, as such, is likely to impact public notice by affecting the likelihood of confusion analysis.
IV. COLOR MARKS
A. General Rule: The amendment of any color in a color mark is a prohibited material alteration.
Color marks are marks that consist solely of one or more colors used on particular objects or substances (as opposed to marks that include color in addition to other elements). See TMEP §1202.05 for further information. Color marks generally appear in a drawing with the outline or configuration of the goods on which they appear to show the placement of the color mark. However, in color marks, the shape or configuration of the goods is not part of the mark. The mark is comprised solely of the color as applied to the object or substance, in the manner depicted and described, so that changing or amending the color of the mark would always change the entire commercial impression created by the mark.
An amendment of the mark to show the same color on a different object is also generally a material alteration, e.g., an amendment of a drawing of a blue hammer to a blue saw would be a material alteration. A color takes on the characteristics of the object to which it is applied, and the commercial impression of a color may change depending on the object to which it is applied. 5
B. Black-and-White Drawings for Color Marks
The Office will not accept black-and-white drawings with a color claim or drawings that show color by use of lining patterns. TMEP §807.07(a). In such cases, where the drawing of a color mark is submitted in black-and-white, and the application contains a description of the color features comprising the mark, the applicant must amend to a color drawing that conforms to the description of the color features contained in the application.
C. Colors in the Drawings Differ from Colors Claimed in Color Mark Applications
Where the color shown in the drawing page in a paper application, or in the digitized image of the drawing page in an electronically submitted application, is inconsistent with the color claimed in the written application (e.g., the mark is shown in blue in the drawing, but the color claimed is orange), then the drawing controls. The color claim may be corrected to conform to the drawing.
V. DRAWING AND SPECIMENS
When the drawing is in black-and-white, no specific color(s) are claimed, therefore acceptable specimens of use could depict the mark in either black-and-white or in multiple colors or shades of a single color.
The mark on the drawing must be a substantially exact representation of the mark as used or intended to be used on or in connection with the goods or services. 6Therefore, when the drawing is in color, the specimens must be in the same color(s) as those in the drawing. TMEP §904.02(c). Whether the drawing in the application can be amended depends on whether the amendment would be a material alteration of the mark, as discussed above.
VI. DRAWINGS AND FOREIGN REGISTRATIONS
The drawing of the mark in a §44 application must be a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the applicant's country of origin. 7The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is stricter than the standard used to determine whether specimens support use of a mark in an application under §1 of the Trademark Act. If the U.S. application is based on both a foreign registration and use in commerce, the mark in the drawing in the U.S. application may not differ in a material way from either the mark shown on the foreign registration or the mark shown on the specimen(s) of record. 8
If the U.S. application has a black-and-white drawing, and color appears in the foreign registration, or color is claimed or described as a feature of the mark in the foreign registration, the mark in the U.S. drawing does not agree with the mark in the foreign registration. In general, the black-and-white drawing in the U.S. application should be amended to agree with the colored mark in the foreign registration unless the proposed amendment would be a material alteration as discussed above.
If the U.S. application has a color drawing, the same colors must be part of the mark in the foreign registration. Whether the drawing in the U.S. application can be amended depends on whether the amendment would be a material alteration of the mark, as discussed above. If the U.S. application has a color drawing but the drawing in the foreign registration is in black and white with no color claim, the applicant would have to file a black and white drawing unless the amendment would be a material alteration or, in the alternative, delete the §44 basis and proceed under §1.
Generally, a §66(a) applicant may not amend the mark in the international registration. 9However, in the event of an ambiguity where the international registration contains no color claim, but there is a color drawing in the international registration, the §66(a) applicant must either make a color claim to clarify that the mark includes color, or submit a black-and-white drawing to clarify that the mark does not include color.10
1 TMEP §807.14.
2See, e.g., In re Data Packaging Corp ., 453 F.2d 1300, 1302, 172 USPQ 396, 397 (CCPA 1972).
3Inter-State Oil Co., Inc. v Questor Corp ., 209 USPQ 583, 586 (TTAB 1980).
4See, e.g., Courtenay Communications Corp., v Hall , 334 F.3d 210, 67 USPQ2d 1210, 1214 (2 nd Cir. 2003) and cases cited therein (“There are many examples of legally protected marks that combine generic wording with distinctive lettering, coloring, or other design elements.”).
5See In re Thrifty, Inc ., 274 F.3d 1349, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) (“A word mark retains its same appearance when used on different objects, but color is not immediately distinguished as a service mark when used in similar circumstances”); In re Hayes , 62 USPQ2d 1443 (TTAB 2002); TMEP §1202.05(c).
6 37 C.F.R. §§2.51(a) and (b).
7 37 C.F.R. §2.51(c).
8 TMEP §1011.01.
9See TMEP §1904.02(g) for more information.
10See 37 C.F.R. §2.52(b)(1) (“If the mark includes color, the drawing must show the mark in color, . . . and submit a claim that the color(s) is a feature of the mark”).
Call the Trademark Assistance Center at 1 800 786-9199 for help on trademark matters. Send questions about USPTO programs and services to the USPTO Contact Center (UCC). You can suggest USPTO webpages or material you would like featured on this section by E-mail to the webmaster@uspto.gov. While we cannot promise to accommodate all requests, your suggestions will be considered and may lead to other improvements on the website. |
|
|
=online
business system 
=fees 
=forms
=help 
=laws/regulations 
=definition
(glossary)