USPTO UPDATE
Changes in the Requirement for a
Description of the Mark in Trademark
Applications
USPTO UPDATE
Changes in the Requirement for a
Description of the Mark in Trademark
Applications
Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and
Trademark Office (‘‘USPTO’’) proposes
to amend 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.
DATES: Comments must be received by
December 24, 2007 to ensure
consideration.
ADDRESSES: The Office prefers that
comments be submitted via electronic
mail message to TM Description
Requirements@uspto.gov. Written
comments may also be submitted by
mail to Commissioner for Trademarks,
P.O. Box 1451, Alexandria, VA 22313–
1451, attention Cynthia C. Lynch; or by
hand delivery to the Trademark
Assistance Center, Concourse Level,
James Madison Building-East Wing, 600
Dulany Street, Alexandria, Virginia,
attention Cynthia C. Lynch; or by
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60610 Federal Register / Vol. 72, No. 206 / Thursday, October 25, 2007 / Proposed Rules
electronic mail message via the Federal
eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://
www.regulations.gov) for additional
instructions on providing comments via
the Federal eRulemaking Portal.
The comments will be available for
public inspection on the Office’s Web
site at http://www.uspto.gov. and will
also be available at the Office of the
Commissioner for Trademarks, Madison
East, Tenth Floor, 600 Dulany Street,
Alexandria, Virginia.
FOR FURTHER INFORMATION CONTACT:
Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark
Examination Policy, by telephone at
(571) 272–8742.
SUPPLEMENTARYINFORMATION: The
USPTO proposes 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
requirement will facilitate greater
accuracy and efficiency in design
coding and in pseudo-mark data
determinations. Therefore, the revised
rules will promote more accurate and
complete searchability of marks in the
USPTO records.
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. Because the
USPTO has concluded that the
description contributes to the accuracy
of design coding and pseudo-mark
determinations that are made before the
application reaches the examining
attorney, and ultimately to more
complete searches, the USPTO proposes
a rule change to facilitate initial design
coding and to make available a
description of the mark in all files
where it is likely to be useful. Thus, any
applicant whose mark is not in standard
characters would be required to provide
a description of the mark as an
application requirement.
Trademarks may consist of words,
designs, or both. Both the USPTO and
the public search USPTO trademark
records for purposes of assessing
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 in new
applications initially occurs before the
applications are assigned to examining
attorneys. When the mark in an
application contains a design element,
USPTO employees or contractors in the
Pre-Examination section designate and
apply the appropriate design codes for
the mark. To improve searchability, the
USPTO has also created a pseudo-mark
field for some marks in the electronic
database. The pseudo-mark field shows
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.
The USPTO has engaged in a variety of
efforts to improve the accuracy of its
design code and pseudo-mark data, and
continues to explore options for further
improvement.
The USPTO has determined that
requiring the applicant to describe any
design elements proves very useful for
determining the proper design codes
and pseudo-mark data. For example, the
applicant’s description of its design
elements can clarify ambiguous design
elements or ‘‘double entendres’’ created
by design elements, and will help to
ensure that the design coding and
pseudo-mark determinations have been
comprehensive.
Discussion of Specific Rules
The Office proposes to revise 37 CFR
2.37 and to make 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 proposed revisions make
the inclusion of a description
mandatory for all applications where
the mark is not in standard characters.
The remainder of § 2.37 would not
change, 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 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 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 are 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.) are
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
proposes to amend 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
proposed 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.
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Federal Register / Vol. 72, No. 206 / Thursday, October 25, 2007 / Proposed Rules 60611
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.
List of Subjects in 37 CFR Part 2
Administrative practice and
procedure, Trademarks.
For the reasons stated, 37 CFR part 2
is proposed to be amended 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. 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.
3. Add § 2.32(a)(8) to read as follows:
§ 2.32 Requirements for a complete
application.
(a) * * *
(8) If the mark is not in standard
characters, a description of the mark.
* * * * *
4. Revise § 2.52(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.
* * * * *
Dated: October 19, 2007.
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