EXAM GUIDE 1-15 FOR “REPEATING-PATTERN MARKS” ADOPTED AS NEW SECT. 1202.19 IN OCTOBER, 2015, EDITION

The October, 2015, edition of the USPTO’s Trademark Manual of Examination Practice comes with a number of changes.  The vast majority of the changes are stylistic or merely adding a new case citation to specific sections.  However, adoption of USPTO Exam Guide 1-15 (June 3, 2015) on “Repeating-Pattern Marks” as new TMEP Sect. 1202.19 et seq., is worth review a second look.

Repeating-Pattern Marks are often applied to clothing and fashion accessories, furniture, bedding, dinnerware, luggage, paper products, and cleaning implements, as well as on packaging for a variety of goods and even for use in connection with services such as retail stores and travel agencies.  New TMEP 1202.19 adopts the definition for a Repeating-Pattern Mark from the Exam Guide as “a mark composed of a single repeated element or a repeated combination of designs, numbers, letters, or other characters, forming a pattern that is displayed on the surface of goods, on product packaging, or on materials associated with the advertising or provision of services.”    The pattern may appear over the entire surface or on just a portion of the relevant item and the repetition of the elements is a feature of the mark which must be appropriately specified in the application for registration.

One significant practice change from the Exam Guide and now adopted in new TMEP 1202.19 is the drawing requirement for a Repeating-Pattern Mark.  In the past, a “swatch-type drawing” - one that does not show the particular placement of the mark but instead consists of a sample of the repeating pattern displayed within a square, rectangle, or other geometric shape – was used to represent all Repeating-Pattern Marks.  Swatch-type drawings enabled applicants to cover Repeating-Pattern Marks used in various ways or on various items.  Issues of changing commercial impressions depending on the nature of the pattern, the type of item on which the pattern appears, the particular placement of the pattern on the item, and the size and scale of the elements in the pattern as applied were avoided.  Now, with limited exception, the drawing for a Repeating-Pattern Mark must depict the pattern as it appears on a portion of an item or over the entire surface of an item.  The overall shape of the item is shown in broken lines to indicate it is not claimed as part of the mark.  Swatch-type drawings are now acceptable only when the applicant provides sufficient evidence showing: (1) the applied-for mark is actually used, or will be used, in various ways or on a variety of different items, but (2) it will nonetheless be perceived as a source indicator and create the same commercial impression across all uses.   

If an applicant cannot satisfy the standard for submitting a swatch-type drawing, multiple applications will be required to depict a Repeating-Pattern Mark, the manner of display and placement of the pattern on an item.  When the pattern is applied to multiple goods a drawing showing the pattern’s placement on one of the good is appropriate if all of the identified goods are similar in form and function, and the Repeating-Pattern Mark will appear in a similar manner on all goods.  The TMEP uses a repeating pattern used in a similar manner on similarly shaped purses of various sizes or a pattern on the handles of forks, spoons and knives as “multiple goods” examples. 

The balance of new TMEP Sect. 1202.19 does not appear to deviate from understood principles of trademark law on common issues, including, inherent distinctiveness, material alternations of mark, and the like.