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372 F.2d 593, 152 USPQ 593 (CCPA 1967), held that
the underlying purpose and essence of patent rights
are separate and distinct from those pertaining to
trademarks, and that no right accruing from one is
dependent or conditioned by the right concomitant to
the other.
See form paragraph 15.55.01 which repeats this
information.
IV. INCLUSION OF TRADEMARKS IN DE­
SIGN PATENT APPLICATIONS
A. Specification
The use of trademarks in design patent application
specifications is permitted under limited circumstances.
See MPEP § 608.01(v). This section assumes
that the proposed use of a trademark is a legal use
under Federal trademark law.
B. Title
It is improper to use a trademark alone or coupled
with the word "type" (e.g., Band-Aid type Bandage)
in the title of a design. Examiners must object to the
use of a trademark in the title of a design application
and require its deletion therefrom.
C. Drawings
When a trademark is used in the drawing disclosure
of a design application, the specification must include
a statement preceding the claim identifying the trademark
material forming part of the claimed design and
DESIGN PATENTS 1513
the name of the owner of the registered trademark.
Form paragraph 15.76 may be used.
'f{ 15.76 Trademark in Drawing
The [1] forming part of the claimed design is a registered trademark
of [2]. The specification must be amended to include a
statement preceding the claim identifying the trademark material
fanning part of the claimed design and the name of the owner of
the trademark.
Examiner Note:
1. In bracket 1, identify the trademark material.
2. In bracket 2, identify the trademark owner.
Any derogatory use of a trademark in a design
application is prohibited and will result in a rejection
of the claim under 35 U.S.C. 171 as being offensive
and, therefore, improper subject matter for design
patent protection. Cf. Dallas Cowboys Cheerleaders,
Inc. v. Pussycat Cinema, ua, 604 F.2d 200,
203 USPQ 161 (2d Cir. 1979) and Coca-Cola Co. v.
Gemini Rising Inc., 346 F. Supp. 1183, 175 USPQ 56
(E.D.N.Y. 1972).
1513 Miscellaneous
With respect to copies of references being supplied
to applicant in a design patent application, see MPEP .
§ 707.05(a).
Effective May 8, 1985, the Statutory Invention
Registration (SIR), 35 U.S.C. 157, and 37 CFR 1.293
- 1.297 replaced the former Defensive Publication
Program. The Statutory Invention Registration (SIR)
Program applies to utility, plant, and design applications.
See MPEP Chapter 1100.
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1500-51 August 2001