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

October 2017 Edition of the TMEP

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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).