It is common to receive an Amended Mark Description or Color Claim Requirement.

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An Amended Mark Description requirement means that there is a correction or another way to describe the appearance of your trademark.

In order for your application to be published, you will need to satisfy this requirement.

For instance, if your trademark is in color, you may not have described all of the locations of color in your trademark in the mark description.  Or, maybe you didn’t accurately describe the appearance of the words or designs in your mark.

So, in the Office Action, the USPTO should have provided an example of an acceptable mark description for your trademark.

Look carefully at this proposed language, and then look at your trademark, and ask yourself if the proposed language accurately describes your trademark.

If you believe that it does, you will simply copy and paste the language that the USPTO recommended to use to describe your trademark.  Since that language has already been pre-approved by the USPTO trademark examining attorney as acceptable, you will know that you are satisfying this requirement!

The USPTO might also provide two examples of acceptable mark descriptions for you to choose from.  This often occurs when it is unclear whether you are claiming “white” as a color in your mark.

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Let’s use the example of this Trader Joe’s trademark.  

Let’s say in my application I only listed the color red in the color mark, and described my trademark as:

The mark consists of the stylized red wording “TRADER JOE’S”.  Above this wording is a stylized red wine bottle, bread, and cheese.  All of this wording and designs are in two red concentric circles with the top of the red wine bottle spanning slightly above the top of the outer circle.

Well, the USPTO might have a question about this description.  In looking at the trademark, there are a lot of white parts in this trademark, that are covered in red.  

For instance, the cheese looks white, and is enclosed by a red outline.  

So, the USPTO might wonder: Did you mean to claim white as a part of your trademark?

In this case, the USPTO would provide you with two examples of an acceptable mark description and color claim.

One option will make it clear that you do NOT want to claim white as a color of your trademark.  In that case, you could use the same mark description, but you would add one sentence at the end: 

The mark consists of the stylized red wording “TRADER JOE’S”.  Above this wording is a stylized red wine bottle, bread, and cheese.  All of this wording and designs are in two red concentric circles with the top of the red wine bottle spanning slightly above the top of the outer circle. The color white represents background and is not claimed as a part of the mark”.

In this case, your color claim would remain the same of just specifying the color red.

That additional sentence “The color white represents background and is not claimed as a part of the mark” makes it clear that you do not want to claim white.  

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What does this mean?  

Well, it means you have broad trademark protection to show the white spaces in ANY color.  Maybe you want to have the white background of this trademark be in blue, or yellow. With this description, you still could!  By stating that the color white is merely background, you still have the opportunity to show those white spaces in any color!

The second option will specify that you ARE claiming white as a feature of your trademark.  So, a new mark description could be:  

The mark consists of the stylized red wording “TRADER JOE’S”.  Above this wording is a stylized red and white wine bottle, bread, and cheese.  All of this wording and designs are in two red concentric circles with the top of the red wine bottle spanning slightly above the top of the outer circle.

As you can see, it specifies where red AND white occur in the trademark.

In this case, your color claim would also then need to be amended to claim both the colors red AND white.

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What does that mean?

Well, it means you can ONLY show your trademark as it currently looks like – red and white.  Your trademark would not be able to show the white parts in other colors, because you are specifically stating that you have claimed those areas as white.

So, if your situation requires clarification of whether to claim white or not, think carefully about which option better suits your needs.  

If you will ALWAYS be showing those parts in white, then claiming white might make sense.  But if you would like to display those white parts in other colors, then you would not claim white as a color.

Fortunately, the USPTO should have provided you with an appropriate mark description or mark descriptions to choose from.  Carefully review those examples.  If you believe one accurately describes your trademark, you can copy and paste this language into your Response.  Then, you will have satisfied this requirement!

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