Spotlight on the Highlights — Clarifications and Changes in the April 2016 TMEP

On April 30, 2016, the USPTO issued the April 2016 Trademark Manual of Examining Procedure (“TMEP”), the latest update to the go-to resource for how to prosecute applications to register trademarks with the USPTO.

This revision of the TMEP includes precedential decisions issued since the last revision of October 2015, and also clarifies and memorializes some existing procedures. A complete index of the changes to the April 2016 TMEP can be found here. Some of the more interesting changes and clarifications relevant to brand owners are as follows:

Mark Descriptions

A description for an applied-for mark may not include a third-party registered mark designating a type font (e.g., HELVETICA® or LUCIDA®), since the use of a type font is not critical to understanding the applied-for mark.

However, a mark having a claim to a particular color may be described using a registered mark for a commercial color-identification system, such as PANTONE®. Because the perception of color is in the eye of the beholder, precision in color identification afforded by such a system is of value in accurately describing the mark.

One Mark per Single Application

Under past practice, the Office has refused registration of marks with a changeable or “phantom” element. Now, the Examining Attorney must consider whether the element encompasses so many potential combinations that the mark drawing would not give adequate constructive notice to the third parties as to the nature of the mark and could be effectively searched for conflicting marks. If the answer is no, the mark will be refused under Section 1 and 45 of the Trademark Act. But, if the changeable element is limited in terms of the number of possible variations, such that it complies with the notice and search requirements described above, the mark should not be refused. An example of such a mark is STERNE KESSLER 5**, where the asterisks represent elements that change to indicate a designation for a charity event number.

House Mark/Full Line

In order to register a mark as a house mark under any filing basis, the Applicant must substantiate the claim with evidence that the mark is, in fact, used as a house mark. This is an evidentiary requirement distinct from the specimen requirement, and applies to marks that are denoted as “house marks” in the identification of goods/services.

If the Applicant further indicates that its house mark is to be used with a “full line of products,” the Examining Attorney will review the specimens and other evidence of record to confirm that the Applicant has shown use of the alleged house mark on a sufficient number or variety of products in its line.

Full-line catalogs and other marketing materials showing the entirety of a company’s line of products may be sufficient to meet both of the above requirements.

Dates of Use

The dates of use specified in a use-based application under Section 1(a), or in an Allegation of Use under Section 1(c) or 1(d), must be on or before the date the application or allegation was signed. This is because both filings must allege current use of the mark.

Computer Software ID

An identification for computer software will be accepted if the function and field of use are described clearly. However, if the software function or purpose is described clearly and the software is not field- or content-specific, a description of the field of use is not required. Accordingly, if you have a computer product with utility across numerous industries or content-types, keep the scope of protection for the mark broad by clearly describing only the products’ function or purpose in the application to register.

This article appeared in the May 2016 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.