807.12    Mark on Drawing Must Agree with Mark on Specimen or Foreign Registration

37 C.F.R. §2.51  Drawing required.

  • (a) In an application under section 1(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.
  • (b) In an application under section 1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods and/or services specified in the application, and once an amendment to allege use under §2.76 or a statement of use under §2.88 has been filed, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.
  • (c) In an application under section 44 of the Act, the drawing of the mark 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.
  • (d) In an application under section 66(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark as it appears in the international registration.

807.12(a)    Applications Under §1 of the Trademark Act

For applications under §1 of the Trademark Act, the drawing must always be compared to the specimen of record to determine whether they match.  See 37 C.F.R. §2.51(a)–(b).  The first step is to analyze whether the mark in the drawing is a substantially exact representation of the mark shown on the specimen.

In an application filed under §1(a) of the Trademark Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods/services, as shown by the specimen.  37 C.F.R. §2.51(a); see 37 C.F.R. §2.72(a)(1).

In an application filed under §1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods/services and as actually used, as shown by the specimen filed with the amendment to allege use or statement of use.  37 C.F.R. §2.51(b); see 37 C.F.R. §2.72(b)(1).

If the mark in the drawing is not a substantially exact representation of the mark shown in the specimen, the second step is to determine whether an amendment of the drawing to agree with the mark shown on the specimen would be a material alteration of the mark in the original drawing.  If the answer is "no," the applicant must submit either an amended drawing or a substitute specimen.  If the answer is "yes," the applicant must submit a substitute specimen and no amendment of the drawing is allowed.   See 37 C.F.R. §2.72(a)–(b). See TMEP §§807.14–807.14(f) for information about material alteration.

Extraneous matter shown on the specimen that is not part of the mark (e.g., the symbols "TM" or "SM," the registration notice ®, the copyright notice ©, or informational matter such as net weight or contents) may not be shown on the drawing.  See TMEP §807.14(a) regarding deletion of non-distinctive matter.

See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a mark with a "phantom" or changeable element, and §1215.02(c) regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a domain name mark.

807.12(a)(i)    Role of Punctuation in Determining Whether Mark on Drawing Agrees with Mark on Specimen

In assessing discrepancies in punctuation between the mark on the drawing and the mark shown on the specimen, the general rules are that:

  • (1)   Extraneous, non-distinctive punctuation that appears on the specimen may be omitted from the mark on the drawing, because an acceptable specimen may contain additional matter used with the mark on the drawing, so long as the mark on the drawing makes a separate and distinct commercial impression apart from the other matter.  See TMEP §807.12(d) and cases cited therein regarding "mutilation" of the mark.
  • (2)   Punctuation in the mark on the drawing must also appear on the specimen because a mark sought to be registered under §1 must be "used in commerce," and if the punctuation on the drawing does not appear on the specimen, the mark on the drawing is not used in commerce.

See TMEP §1215.08(c) regarding the addition or deletion of a "." in marks for domain registry operator or domain name registration services.

807.12(a)(ii)    Punctuation on the Drawing but Not on the Specimen

If a drawing contains punctuation, the elements of punctuation are presumed to be part of the mark.  Thus, if there is punctuation in the mark on the drawing, the punctuation must also appear on the specimen or the drawing is not considered to be a substantially exact representation of the mark as used in commerce.  If deletion of the punctuation from the drawing does not alter the commercial impression, the drawing may be amended to match the specimen.  If deletion of the punctuation changes the commercial impression, i.e., constitutes a material alteration, the applicant must submit a substitute specimen to match the original drawing.    See TMEP §§807.14–807.14(f) regarding material alteration.

For example, if the mark on the drawing is "ALL THE KING’S MEN," and the mark on the specimen is ALL THE KING’S MEN, the mark on the drawing is not a substantially exact representation of the mark as used in commerce.  Since the deletion of the quotation marks from the drawing would not change the commercial impression of the mark, the drawing may be amended to match the specimen.  The applicant has the option to either:  (1) amend the drawing to delete the punctuation; or (2) submit a new specimen showing use of the mark with the punctuation.

However, if the mark on the drawing is GOT MILK?, and the mark on the specimen is GOT MILK, the deletion of the punctuation from the drawing would constitute a material alteration because it changes the commercial impression from a question to a statement.  Therefore, the drawing may not be amended and the applicant must submit a substitute specimen that includes punctuation in order for the drawing to be a substantially exact representation.  

807.12(a)(iii)    Punctuation on the Specimen but Not on the Drawing

Generally, extraneous, non-distinctive punctuation marks that appear on the specimen may be omitted from the drawing, if the matter on the drawing makes an impression separate and apart from the punctuation marks that appear on the specimen.   See TMEP §807.12(d).  For example, if the mark on the drawing is HOME RUN, and the mark on the specimen is "HOME RUN," the drawing is considered a substantially exact representation of the mark as used on the specimen.  The quotation marks on the specimen are nondistinctive and do not change the commercial impression of the mark, so it is unnecessary to amend the drawing or require a substitute specimen. In re MN Apparel LLC, 2021 USPQ2d 535, at *12 (TTAB 2021) ("The mere addition of a comma to the mark in the specimen is not sufficient to create a different commercial impression from the mark on the drawing page.")

However, in rare instances, the punctuation marks on the specimen result in a mark with a different commercial impression than the mark shown on the drawing.  For example, if the mark on the specimen is PREGNANT?, and the mark on the drawing is PREGNANT, the mark on the drawing is not a substantially exact representation of the mark as actually used.  The question mark on the specimen transforms the word PREGNANT from a mere statement to a question, and, therefore, changes the commercial impression of the mark.  Moreover, the drawing cannot be amended to add the punctuation because it would result in a material alteration.  Therefore, the applicant must submit a new specimen showing the mark without the punctuation. In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1751-52 (TTAB 2012) (finding the mark GOT STRAPS on the drawing not a substantially exact representation of the mark GOT STRAPS? on the specimen). See TMEP §§807.14–807.14(f).

807.12(b)    Applications Under §44 of the Trademark Act

In a §44 application, the drawing of the mark 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."  37 C.F.R. §2.51(c).  The 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 a specimen supports use of a mark in an application under §1 of the Trademark Act. See TMEP §1011.01.  The drawing in the U.S. application must display the entire mark as registered in the foreign country.  The applicant may not limit the mark to part of the mark shown in the foreign registration, even if it creates a separate and distinct commercial impression.

Exception:  Non-material informational matter that appears on the foreign registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.

When the mark on the drawing does not agree with the mark on the foreign registration, the applicant cannot amend the drawing of the mark if the amendment would materially alter the mark on the original drawing.  37 C.F.R. §2.72(c); TMEP §§807.14–807.14(f), 1011.01.

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 color mark in the foreign registration, unless the proposed amendment would be a material alteration.

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 upon whether the amendment would be a material alteration of the mark.  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 must either:  (1) amend the drawing in the U.S. application to a black-and-white drawing, if the amendment would not be a material alteration; or (2) delete the §44 basis and proceed under §1.

See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the foreign registration in an application that seeks registration of a mark with a "phantom" or changeable element.

807.12(c)    Applications Under §66(a) of the Trademark Act

In an application under §66(a) of the Trademark Act, the drawing of the mark must be "a substantially exact representation of the mark as it appears in the international registration."  37 C.F.R. §2.51(d).  The IB will include a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States.  It is, therefore, unnecessary for the examining attorney to compare the drawing in the §66(a) application with the reproduction in the international registration.  See TMEP §§1904–1904.15 for further information about §66(a) applications.

The mark in a §66(a) application cannot be amended.   TMEP §§807.13(b), 1904.02(j).

Exception:  Non-material informational matter that appears on the international registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.

Because the drawing requirements in other countries often differ from those in the United States, an ambiguity may arise when the international registration contains no color claim, but the reproduction of the mark in the international registration is in color.  In such cases, the §66(a) applicant must either:  (1) make a color claim to clarify that the depicted color(s) is a feature of the mark and submit a description of the location of the color(s); or (2) submit a black-and-white reproduction of the mark.  See 37 C.F.R. §2.52(b)(1).  This is not considered to be an amendment of the mark, but rather a clarification of the ambiguity.

If the USPTO receives a notification of correction to a mark in the International Register from the IB, the examining attorney must conduct a new search of the mark as corrected and, if appropriate, issue a provisional refusal of the request for extension of protection as corrected on all applicable grounds.  The USPTO must notify the IB of the provisional refusal within 18 months of notification of the correction.  See TMEP §1904.03(f) regarding notifications of corrections to the International Register.  If the reproduction of the corrected mark features color, the applicant will be required to comply with the requirements for a color drawing. 37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a)–807.07(a)(ii).

807.12(d)    Mutilation or Incomplete Representation of Mark

In an application under §1 of the Trademark Act, the mark on the drawing must be a complete mark, as evidenced by the specimen.  When the representation on a drawing does not constitute the complete mark, it is sometimes referred to as a "mutilation" of the mark.  This term indicates that essential and integral subject matter is missing from the drawing.  An incomplete mark may not be registered.   See In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); In re Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999) ; In re Boyd Coffee Co., 25 USPQ2d 2052 (TTAB 1993); In re Semans, 193 USPQ 727 (TTAB 1976); see also Institut Nat’l Des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1582, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992) (citing J. Thomas McCarthy,Trademark & Unfair Competition (2d. ed. 1984) §19:17).

However, in a §1 application, an applicant has some latitude in selecting the mark it wants to register.  The mere fact that two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes.  An applicant may apply to register any element of a composite mark if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen, i.e., the element performs a trademark function in and of itself. See, e.g., In re Univ. of Miami, 123 USPQ2d 1075, 1079 (TTAB 2017) (finding that the depiction of the mark in the drawing as a personified ibis wearing a hat and sweater created a separate and distinct commercial impression from literal elements that appeared on the hat and sweater in the specimens of use and thus the mark drawing was a substantially exact representation of the mark as used). "A mark creates a separate and distinct commercial impression if it is not ‘so entwined (physically or conceptually) with other material that it is not separable from it in the mind of the consumer.’" In re MN Apparel LLC, 2021 USPQ2d 535, at *10-11 (TTAB 2021) (citing In re Yale Sportswear Corp., 88 USPQ2d 1121, 1123 (TTAB 2008)).

In a §44 application, the standard is stricter.  TMEP §1011.01.  The drawing in the U.S. application must display the entire mark as registered in the country of origin.  The applicant may not register part of the mark in the foreign registration, even if it creates a distinct commercial impression.

In any application, if registration is refused on the ground that the mark on the drawing does not agree with the mark as shown on the specimen or foreign registration, the applicant may not amend the drawing if the amendment would materially alter the mark on the original drawing.  37 C.F.R. §2.72; TMEP §§807.14–807.14(f), 1011.01.

This issue will not arise in a §66(a) application, because the IB includes a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States.  The mark in a §66(a) application cannot be amended.   TMEP §807.13(b).

In the following cases, an element of a composite mark was found not to present a separate and distinct commercial impression apart from any other matter with which the mark was or would be used on the specimen: Chem. Dynamics, 839 F.2d at 1569, 5 USPQ2d at 1828 (registration of design of medicine dropper and droplet properly refused, where the proposed mark is actually used as an integral part of a unified mark that includes a design of a watering can, and does not create a separate commercial impression); In re Lorillard Licensing Co., 99 USPQ2d 1312 (TTAB 2011) (finding that the drawing was not a substantially exact representation of the proposed mark, an orange-and-green color combination for the packaging of cigarettes, as appearing on the specimen); In re Pharmavite LLC, 91 USPQ2d 1778 (TTAB 2009) (mark comprised of the design of two bottles properly refused, finding that it does not create a separate and distinct commercial impression apart from the mark shown on the specimen and further that it is not a substantially exact representation of the mark shown on the specimen); In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) (refusing registration of the mark UPPER 90, finding that it does not form a separate and distinct commercial impression apart from the degree symbol that appears on the specimen); Miller Sports, 51 USPQ2d at 1059 (mark comprising the letter "M" and skater design properly refused, where the "M" portion of applicant’s "Miller" logo is so merged in presentation with remainder of logo that it does not create a separate commercial impression); Boyd Coffee, 25 USPQ2d at 2052 (mark comprising cup and saucer design properly refused as mutilation of mark actually used, which includes the cup and saucer design as well as a sunburst design, since the cup and saucer design does not create a separate and distinct commercial impression apart from the sunburst design); In re Sperouleas, 227 USPQ 166 (TTAB 1985) (torch design unregistrable apart from wording SOCRATES DELIGHT that appears on specimen, where the words are not only prominent but are also physically merged with the design, such that the design does not make a separate commercial impression); In re Volante Int’l Holdings,196 USPQ 188 (TTAB 1977) (mark consisting of a design of a double-headed girl, a dragon, and a tree is not a substantially exact representation of the mark actually used, which incorporates the visually inseparable and intertwined term "VIRGIN"); In re Library Rest., Inc., 194 USPQ 446 (TTAB 1977) (the words "THE LIBRARY" are so intimately related in appearance to other elements of the mark actually used that it is not possible to conclude that the pictorial features by themselves create a separate commercial impression); Semans, 193 USPQ at 727 (the mark KRAZY, displayed on the specimen on the same line and in the same script as the expression "MIXED-UP," does not in itself function as a registrable trademark apart from the unitary phrase "KRAZY MIXED-UP"); In re Mango Records, 189 USPQ 126 (TTAB 1975) (the typed mark MANGO is so uniquely juxtaposed with the pictorial elements of the composite that it is not a substantially exact representation of the mark as used on the specimen and does not show the mark in the unique manner used thereon).

An element of a proposed mark was found to create a separate commercial impression in the following cases: In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (C.C.P.A. 1950) (reversing refusal to register the mark SERVEL as a mutilation of "SERVEL INKLINGS", where the specimen displays an insignia between the words "SERVEL" and "INKLINGS," and "INKLINGS" is printed in a large and different kind of type); In re MN Apparel LLC, 2021 USPQ2d 535, at *10 (reversing refusal to register MOSTLY MN ONE WITH EVERYTHING where the specimen shows applicant’s house mark or trade name "MN Apparel" appearing with the applied-for mark but separated by a hyphen or an entire sentence, which is sufficient to create a separate commercial impression); In re Frankish Enters. Ltd., 113 USPQ2d 1964, 1974 (TTAB 2015) (finding three-dimensional design of monster truck body creates a commercial impression as an indication of origin separate and apart from wording and additional markings displayed on truck body as part of the specimen); In re Royal BodyCare Inc., 83 USPQ2d 1564 (TTAB 2007) (reversing refusal to register NANOCEUTICAL, finding that the term is actually used in a manner that creates a commercial impression separate and apart from the house mark or trade name "RBC’s"); In re Big Pig, Inc.,81 USPQ2d 1436 (TTAB 2006) (PSYCHO creates a separate commercial impression apart from additional wording and background design that appears on the specimen, where the word "PSYCHO" is displayed in a different color, type style and size, such that it stands out); In re 1175856 Ont. Ltd., 81 USPQ2d 1446 (TTAB 2006) (reversing refusal to register WSI and globe design, since the letters "WSI" and globe design create a separate commercial impression apart from a curved design element that appears on the specimen); In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (reversing refusal to register TINEL-LOCK as mutilation of mark "TRO6AI-TINEL-LOCK-RING," noting that part or stock number does not usually function as a source identifier, and the "fact that hyphens connect both the part number and the generic term to the mark does not, under the circumstances presented in this case, create a unitary expression such that ‘TINEL-LOCK’ has no significance by itself as a trademark."); In re Nat'l Inst. for Auto. Serv. Excellence,218 USPQ 744, 745 (TTAB 1983) (design of meshed gears "is distinctive in nature" and "creates a commercial impression separate and apart from the words superimposed thereon"); In re Schecter Bros. Modular Corp.,182 USPQ 694 (TTAB 1974) (where specimens show mark consisting in part of "RAINAIRE" together with its shadow image, it is not a mutilation of mark to delete shadow image from drawing since "RAINAIRE" creates the essential impression); In re Emco, Inc., 158 USPQ 622 (TTAB 1968) (reversing refusal and concluding that the law and the record supported applicant’s position that RESPONSER is registrable without addition of the surname "MEYER").

See TMEP §807.14(c) regarding the effect of the addition or deletion of punctuation on the commercial impression of the mark.

807.12(e)    Compound Word Marks and Telescoped Marks

Like any other drawing, a drawing of a compound word mark or telescoped mark must be a substantially exact representation of the mark as it appears on the specimen in a §1 application or on the foreign registration in a §44 application.

A compound word mark is comprised of two or more distinct words, or words and syllables, that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, PULSAIR).  Often, each word or syllable in a compound word mark is displayed or highlighted by:  (1) capitalizing the first letter of each word or syllable (e.g., TimeMaster); or (2) presenting the words or syllables in a different color, script, or size (e.g., RIBtype).

If the drawing depicts the mark as a compound word mark, but the specimen shows the mark as two separate words, or vice versa, the examining attorney must determine whether the mark on the drawing is a substantially exact representation of the mark on the specimen and/or whether an amendment of the drawing would be a material alteration of the mark.   See In re Innovative Cos., 88 USPQ2d 1095 (TTAB 2008) (FREEDOMSTONE not a substantially exact representation of FREEDOM STONE, but amendment of FREEDOMSTONE to FREEDOM STONE not deemed a material alteration). For example, if the drawing depicts the mark as BOOKCHOICE, but the specimen shows it as BOOK CHOICE, the mark on the drawing is not a substantially exact representation of the mark on the specimen. An amendment of the drawing would not be a material alteration. However, depending upon the nature of the goods/services, a disclaimer might be required. Note that a specimen showing the mark as BookChoice would be a substantially exact representation.

A telescoped mark is comprised of two or more words that share letters (e.g., SUPERINSE).  A telescoped word must be presented as a unitary term with the letters shared.  The telescoped element may not be represented as two words, because the shared letter is an aspect of the commercial impression, (e.g., SUPERINSE, not SUPE RINSE or SUPER RINSE).

See TMEP §§1213.05(a)–1213.05(a)(ii) regarding disclaimers in telescoped and compound word marks.