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[Gitman]

Hey,

I thought I would just merge two topics into one.  First, are specimens made for public viewing either through the www.uspto.gov or some other publication?

And two: When searching through the USPTO database, I have seen where some marks have the "mark consists of..." while others do not.  I know that when you register a mark that contains an image, you have to describe it, so why do some of these marks that contain either shapes, images, colors etc. not include the "mark consists of..."  I am NOT talking about marks that are just words.  I understand that you don't have to describe those, but I thought that all the ones that contain an image have to have the description.  Can someone please clarify?

Thanks.

[JSonnabend]

Specimen are by their very nature public -- they are meant to show how the mark has been used publicly.  You can view a file's specimen using TDR, assuming the application is recent enough.  If not, you'll have to request the file wrapper from the PTO.

In my experience, it's relatively new that examiners require written descriptions of all design marks, and some still don't require it.

- Jeff

[Gitman]

This is on the applications:

"NOTE: A description of the mark is required for ALL marks that are in a special form (i.e., for any mark not in standard characters). You must enter a description even if what the mark represents is immediately clear, e.g., "The letter C." Also, for any color mark, the description of the mark must include the nature and location of the color; e.g., "A bird with a red body, blue wings, and yellow beak."

So I assumed it was required.

[JSonnabend]

I know that in recent years I have had non-standard character marks go through without a description, but maybe it's further back than I remember.  I'm also not certain when this requirement first surfaced.  It may be that all examiners have required it recently, and I'm misremembering things a bit.

Ultimately, I'm not sure that the description is all too important in any substantive sense, although I've never faced the issue directly in any litigation context.

- Jeff

[Lyza]

A description of a design mark is required only when the design would not be considered obvious.  They are requiring them more these days, however, it is a good idea to include a description due to the advent of the assignment of design codes.

For example, one of the marks for which I have taken over docketing responsibilities consists of rays of light as a background for several words.  In black and white format, the mark took on a different appearance than light rays and was issued an animal design code.  Had the applicant filed a description, this might have been avoided and we might now not have to request an amendment of the description and design codes.  Thanks.

[JSonnabend]

A description of a design mark is required only when the design would not be considered obvious.

On what are you basing that statement, Lyza?  I know in one recent application the examiner required me to add a description despite a simple design element to a predominantly word mark.

- Jeff

[Lyza]

I've had many applications in the past accepted without design descriptions when they were obvious designs, i.e. a picture of a house with words, man on a horse and words, etc.  As I said though, they are going to be required today because of the assignment of design codes.  You can, however, exclude them from the initial application and file a description with an office action response, if that is a point of refusal.  Hope this helps.