[E-trademarks] DSCM - General Guidelines - Graphic Missing For Guideline 15 ?!?!? (That Color Lining Graphic)

[Ken Boone]

FYI - Responding to Pamela Chestek's comment, "I'm not sure where you can find a copy of the patterns, I couldn't locate it quickly in the TMEP."  I recall adding that color lining graphic to the DSCM about 15 to 20 years ago, but I couldn't find it in the current DSCM.  Looking more thoroughly, that graphic apparently got misplaced with recent updates to the DSCM.

In the email below, I alerted the USPTO to restore that color lining graphic to the DSCM as quickly as possible.

Hope this helps,
Ken Boone
________________________________
From: Ken Boone <boondogles at hotmail.com>
Sent: Friday, March 1, 2024 6:35 AM
To: TMFeedback <tmfeedback at uspto.gov>; TMDesignCodeComments at USPTO.GOV <TMDesignCodeComments at USPTO.GOV>
Subject: DSCM - General Guidelines - Graphic Missing For Guideline 15 ?!?!?

In the Design Search Code Manual (DSCM), in the General Guidelines section, at the end of Guideline 15, the following text appears.

Prior to November 2, 2003 an applicant was allowed to represent color in a mark by using a color lining system. The color lining system required applicants to line their drawings using certain patterns designated for certain colors, and to provide a color lining statement describing where the colors appeared. The color lining system is represented in the chart below:
[Sample drawings for design code Guideline 15]
Some applicants continue to file for color marks using this system. The drawing in these applications will be lined as indicated above and the application will contain a claim to a specific color or colors. The coder should only code marks as color marks if both the color lining and color statement appear in the application. As with all marks for color alone, there are no words, letters or numbers in the mark.
The highlighted text presumably is the alternate text for the graphic that was supposed to be displayed there, namely the graphic mentioned in the previous sentence (The color lining system is represented in the chart below:).

It appears that the relevant image file somehow was lost when the USPTO updated the DSCM from using the search engine for the retired TESS to the new search engine used in the new Trademark Search.  I hope that graphic showing the different patterns used to represent colors in trademark drawing prior to November 2, 2003 can be restored ASAP.

Thank you in advance for your prompt attention to this matter.



Ken Boone,
Former IT Specialist at the USPTO (Retired)

PS: The following E-Trademark discussion group posting prompted me to find that color lining graphic (highlighting mine).  Isn't that graphic in the TMEP or elsewhere on the USPTO website?  Apparently the color lining graphic is difficult to locate.


________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Pamela Chestek via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Thursday, February 29, 2024 5:43 PM
To: e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
Cc: Pamela Chestek <pamela at chesteklegal.com>
Subject: Re: [E-trademarks] Mark description in registration describes colors, but no claim to color made--what happens if renewal specimen uses different colors?

Is the drawing not lined for color? Applications filed before November 2003 could use a drawing in black and white with various lining patterns used to represent different colors. See TMEP 808.01(b). So it sounds like it may actually have a color claim that, presumably, matches the description.

I'm not sure where you can find a copy of the patterns, I couldn't locate it quickly in the TMEP. But I'm sure someone on this list knows where it is! Used to be in the CFR.

Pam

Pamela S. Chestek
Chestek Legal
300 Fayetteville St.
Unit 2402
Raleigh, NC 27602
+1 919-800-8033
pamela at chesteklegal.com<mailto:pamela at chesteklegal.com>
www.chesteklegal.com<http://www.chesteklegal.com/>



On 2/29/2024 6:25 PM, Kevin Grierson via E-trademarks wrote:

Hi folks, this is a weird one.  Inherited a fairly old registration (filed 2001, registered 2004) with lots of scanned paper filings, so I’m having a hard time figuring out what happened, but my client has a registration for a mark with a design component.  The application and registration do NOT reference a claim to color, but the mark description DOES, so for example, if the mark was ACME next to a flag, the description reads “The mark consists of the word ACME in red next to a flag consisting of red and white stripes.”    The application was based on a foreign registration in color; my guess is that the original counsel omitted (forgot?) the color claim but described the original foreign mark in the application.



20+ years later, client has decided to change the color scheme, so now ACME is in green and the flag has green and white stripes.  Would a specimen in the new color scheme filed with a Section 8 declaration be accepted?  As noted, the registration doesn’t claim color (and for what it’s worth, the office’s official drawing is in black and white) but the specimen would not match the description of the mark. Thankfully, we recently filed the second renewal with a specimen that matches the colors in the description, but I’m thinking down the road about the next renewal and whether it makes sense to file a new application now.



I have looked through the TMEP at the sections dealing with mark descriptions, but all the sections I’ve found deal with pre-registration review issues, not what effect (if any) an inaccurate description has on post-registration filings.



Thanks,



Kevin



Kevin Grierson<https://www.culhanemeadows.com/attorney/kevin-grierson/> (he/him)

Partner, Intellectual Property Group​​​​

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240301/e7724a46/attachment.htm>