807.03   Standard Character Drawings

Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace the term "typed" drawing with "standard character" drawing.  Applicants who seek to register a mark without any claim as to the manner of display must submit a standard character drawing that complies with the requirements of 37 C.F.R. §2.52(a).

807.03(a)   Requirements for Standard Character Drawings

A standard character drawing must show the mark in black on a white background.  An applicant may submit a standard character drawing if:

• The mark does not include a design element;
• All letters and words in the mark are depicted in Latin characters;
• All numerals in the mark are depicted in Roman or Arabic numerals;
• The mark includes only common punctuation or diacritical marks; and
• No stylization of lettering and/or numbers is claimed in the mark.

37 C.F.R. §2.52(a).

If the applicant files an application on paper that includes a standard character claim, the applicant may depict the mark in any font style; may use bold or italicized letters; and may use both uppercase and lowercase letters, all uppercase letters, or all lowercase letters, since no claim is made to any particular font style, size, or color.  However, the USPTO will convert applicant’s depiction of the mark to a standardized typeface for printing in the Official Gazette and on the registration certificate.  If filing electronically via the Trademark Electronic Application System ("TEAS"), the applicant may neither depict the mark in any particular font style nor use bold or italicized letters.  TEAS will automatically convert any wording typed into the standard-character field to a standardized typeface.

Superscripts, subscripts, exponents, or other characters that are not in the USPTO’s standard character set (see TMEP §807.03(b)) are not permitted in standard character drawings.  In re AFG Indus. Inc., 17 USPQ2d 1162, 1163-64 (TTAB 1990) (holding that a special form drawing is required for a drawing featuring a raised numeral).  The degree symbol is permitted.

Underlining is not permitted in a standard character drawing.

Standard Character Claim Required.  An applicant who submits a standard character drawing must also submit the following standard character claim:

The mark consists of standard characters without claim to any particular font style, size, or color.

This statement will appear in the Official Gazette and on the certificate of registration.

807.03(b)   List of Standard Characters

The USPTO has created a standard character set that lists letters, numerals, punctuation marks, and diacritical marks that may be used in a standard character drawing.  The standard character set is available on the USPTO website at http://www.uspto.gov/teas/standardCharacterSet.html.  If the applicant has claimed standard character format and the drawing includes elements that are not in the set, then the examining attorney must treat the drawing as a special form drawing, ensure that the mark drawing code is changed, and require the applicant to delete the standard character claim.  See TMEP §807.18 concerning mark drawing codes.

In a §66(a) application, if the drawing includes elements that are not in the standard character set, the examining attorney must require deletion of the standard character claim even if the international registration indicates that the mark is in standard characters.  See the IB’s Guide to International Registration, Para. B.II.07.44.

807.03(c)   Drawings Containing Both a Standard Character Claim and Designs or Other Elements

If the application contains a standard character claim, but the mark includes a design element, color, a claim of a particular style or size of lettering, or other elements such that the mark does not meet the requirements of 37 C.F.R. §2.52(a), then the examining attorney must:  (1) treat the drawing as a special form drawing; (2) require that the applicant delete the standard character claim from the record; (3) ensure that the appropriate mark drawing code is entered into the Trademark database; and (4) if appropriate, add design search codes.  See TMEP §807.18 concerning mark drawing codes and TMEP §104 regarding design codes.

Similarly, a standard character claim is not acceptable where the characters form shapes or designs, such as emoticons.

807.03(d)   Changing From Special Form Elements to Standard Characters, or the Reverse, May be a Material Alteration  

A special form drawing containing a design element, color, a claim to a particular style or size of lettering, or other distinctive elements cannot be amended to a standard character drawing, unless the examining attorney determines that the amendment is not material.  37 C.F.R. §2.72.

Conversely, a standard character drawing cannot be amended to a special form drawing containing a design element, color, or a claim to a distinctive style or size of lettering, unless the examining attorney determines that the amendment is not material.  37 C.F.R. §2.72.  See TMEP §§807.14–807.14(f) regarding material alteration.

807.03(e)   Standard Character Drawing and Specimen of Use

When the applicant submits a standard character drawing, the mark shown in the drawing does not necessarily have to appear in the same font style, size, or color as the mark shown on the specimen of use.  However, the examining attorney must review the mark depicted on the specimen to determine whether a standard character claim is appropriate, or whether a special form drawing is required.

If the examining attorney determines that the standard characters are displayed in a distinctive manner that changes the meaning or overall commercial impression of the mark, the examining attorney must process the drawing as a special form drawing, and require the applicant to delete the standard character claim.  As with all drawings, the mark on the drawing must be a substantially exact representation of the mark used on the specimen in an application under §1 of the Trademark Act.  37 C.F.R. §§2.51(a) and (b); TMEP §§807.12(a)–807.12(a)(iii).

The examining attorney may delete the standard character claim by examiner’s amendment after obtaining approval from the applicant or the applicant’s qualified practitioner.  When deleting a standard character claim, the examining attorney must ensure that the mark drawing code is changed.  See TMEP §807.18 concerning mark drawing codes.

See TMEP §807.04(b) for further information as to when a special form drawing is required.

807.03(f)   Standard Character Drawing and Foreign Registration

In a §44 application, if the applicant claims standard characters, the examining attorney must ensure that the foreign registration also claims standard characters.  See 37 C.F.R. §2.51(c); TMEP §807.12(b).

If the foreign registration certificate does not indicate that the mark is in standard characters (or the equivalent), the examining attorney must inquire whether the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent).  The applicant must either submit an affirmative statement that the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent), or delete the standard character claim in the United States application.  A statement that the foreign registration includes a claim that the mark is in standard characters may be entered in the record through a Note to the File if there are no other outstanding issues.

Appendix E  of this manual lists countries that register marks in standard characters or the equivalent.  For countries on this list, if all letters and words in the mark are in block capital or capital and lowercase Latin characters, all numerals are Roman or Arabic numerals, the mark includes only common punctuation or diacritical marks, and no stylization of lettering and/or numbers is claimed, the examining attorney need not inquire whether the registered mark in the foreign registration is in standard characters or the equivalent, unless the applicant has indicated that the mark is not standard characters or the equivalent.  If the applicant has indicated that the mark is not in standard characters or the equivalent, but the foreign registration is from a country on the list and the mark meets the standards set forth above, the examining attorney must inquire about the discrepancy.  In response to the inquiry, the applicant must either amend the application to claim standard characters, or confirm that the mark is not in standard characters or the equivalent.  If a particular country is not on this list, the examining attorney must inquire as to whether the mark in the foreign registration is for a mark in standard characters or the equivalent.

The examining attorney may delete the standard character claim by examiner’s amendment after obtaining approval from the applicant or applicant’s qualified practitioner.  When deleting a standard character claim, the examining attorney must ensure that the mark drawing code is changed.  See TMEP §807.18 concerning mark drawing codes.

807.03(g)   Drawings in "Typed" Format With No Standard Character Claim

Section 1 Applications.  If the application does not include a standard character claim, but the mark is shown in a format that would have been considered "typed" prior to November 2, 2003 (i.e., the mark is shown in capital letters, or the mark is specified as "typed" in the body of the application, on a separate drawing page, or on a cover letter filed with the application), the drawing will initially be coded and entered into the automated records of the USPTO as a special form drawing.  However, the examining attorney must treat the drawing of the mark as a standard character drawing and ensure that a standard character claim is entered into the record.

If the application is ready to be published for opposition, the examining attorney must enter the standard character claim by a no-call examiner’s amendment.  In this situation, no prior authorization from the applicant is required to add a claim by an examiner’s amendment.  See TMEP §707.02.  If an Office action is necessary, it must include a requirement that the applicant submit a standard character claim.

Once the applicant submits a standard character statement, the examining attorney must ensure that the mark drawing code is changed to 4 (see TMEP §807.18).

Section 44 Applications.  In a §44 application, the applicant cannot claim standard characters unless the foreign registration also claims standard characters.  See TMEP §807.03(f).

Section 66(a) Applications.  In a §66(a) application, the request for extension of protection forwarded by the IB normally indicates whether there is a standard character claim in the international registration.  However, due to differences in requirements for standard character claims in different countries, there may be situations where the mark in the international registration meets the USPTO’s requirements for a standard character claim, but no standard character claim is set forth in the international registration.  If the international registration does not indicate that the mark is in standard characters, and the applicant seeks to amend the §66(a) application to add a standard character claim, the examining attorney must contact the Supervisor of the Madrid Processing Unit ("MPU") via e-mail for instructions on how to proceed.  The applicant may not add a standard character claim unless the mark meets the United States requirements for a standard character claim, as set forth in 37 C.F.R. §2.52(a) (see TMEP §§807.03(a) and (b)).

807.03(h)   Drawings Where the Format Is Unclear

Section 1 Applications.  When it is unclear from the record whether the submitted drawing was intended to be a standard character drawing, the examining attorney must contact the applicant for clarification.  For example, clarification is needed if the font style used in the mark on the drawing does not match the font style used on the specimen and there is no standard character claim in the application, or if the applicant files a paper application in which the mark is printed or written by hand.  If the mark is intended to be in standard characters, then the examining attorney must require that the applicant amend the application to include the standard character claim.  This may be done by examiner’s amendment.  Once the applicant submits this statement, the examining attorney must ensure that the mark drawing code is changed to 4 (see TMEP §807.18).

Section 44 Applications.  In a §44 application, the applicant cannot claim standard characters unless the foreign registration also claims standard characters.  See TMEP §807.03(f).

Section 66(a) Applications.  In a §66(a) application, the request for extension of protection forwarded by the IB normally indicates whether there is a standard character claim in the international registration.  However, due to differences in requirements for standard character claims in different countries, there may be situations where the mark in the international registration meets the USPTO’s requirements for a standard character claim, but no standard character claim is set forth in the international registration.  If the international registration does not indicate the mark is in standard characters, and the applicant seeks to amend the §66(a) application to add a standard character claim, the examining attorney must contact the MPU Supervisor via e-mail for instructions on how to proceed.  The applicant may not add a standard character claim unless the mark meets the United States requirements for a standard character claim, as set forth in 37 C.F.R. §2.52(a) (see TMEP §§807.03(a) and (b)).

Alternatively, if the international registration indicates that the mark is in standard characters, but the drawing includes elements that are not in the standard character set, the examining attorney must require deletion of the standard character claim even if the international registration indicates that the mark is in standard characters.  See the IB’s Guide to International Registration, Para. B.II.07.44.

The Guide to International Registration provides that if an Office "considers that the mark is not in standard characters, it may issue a refusal, for example, on the ground that the international registration covers two marks (one in standard characters and one in special characters) or that it is simply not clear for what protection is sought."  Para. B.II.07.45.  See TMEP §807.01 regarding multiple marks and §§1214–1214.04 regarding phantom marks.

807.03(i)   Typed Drawings

Prior to November 2, 2003, "standard character" drawings were known as "typed" drawings.  The mark on a typed drawing had to be typed entirely in capital letters.  A typed mark is the legal equivalent of a standard character mark.