Non-Traditional Trademark Application Checklist: Drawing, Description, and Evidence

By Casey Scott McKay · 2025-12-05

This checklist runs a United States non-traditional trademark application from intake to registration and out the other side, in twelve phases, with a single fictional client carried through every one of them. It starts where the money is actually saved — the functionality interview and the shelf audit — then moves through the choice between a bare sensory claim and a composite registration, the filing basis, and the drafting of the description that becomes the property line for a mark no drawing can depict. It gives the drawing regime for each mark type under 37 C.F.R. 2.52 and TMEP 807.09 through 807.11, the specimen formats and file-size ceilings for sound, motion, scent, texture, and color, and the Section 2(f) evidence package with realistic costs and the pleading choice between an outright and an alternative claim. It then works the office action: the three-month clock, the Rule 2.61(b) information requirement, and a response order for functionality, failure-to-function, ornamentality, and Section 2(f) insufficiency refusals. It closes with the appeal-or-stop decision, the EUIPO-first foreign filing sequence, the maintenance failures that have killed several hard-won registrations, a common-mistakes list, and a deadlines table with fees.

IP and Technology > Trademarks | Checklist | Published 5 December 2025 - Updated 3 June 2026 | Casey Scott McKay - marksy.us

Summary. This checklist runs a United States non-traditional trademark application from intake to registration and out the other side, in twelve phases, with a single fictional client carried through every one of them. It starts where the money is actually saved — the functionality interview and the shelf audit — then moves through the choice between a bare sensory claim and a composite registration, the filing basis, and the drafting of the description that becomes the property line for a mark no drawing can depict. It gives the drawing regime for each mark type, the specimen formats and file-size ceilings for sound, motion, scent, texture, and color, and the Section 2(f) evidence package with realistic costs and the pleading choice between an outright and an alternative claim. It then works the office action: the three-month clock, the Rule 2.61(b) information requirement, and a response order for functionality, failure-to-function, ornamentality, and Section 2(f) insufficiency refusals. It closes with the appeal-or-stop decision, the EUIPO-first foreign filing sequence, the maintenance failures that have killed several hard-won registrations, a common-mistakes list, and a deadlines table with fees.

Keywords: non-traditional trademark checklist · color mark drawing · sound mark specimen · motion mark freeze frames · scent mark specimen · description of the mark · 37 cfr 2.52 · tmep 807.09 · tmep 1202.05 · functionality screen · morton-norwich factors · section 2(f) evidence · substantially exclusive use · material alteration · rule 2.61(b) information requirement · trademark center filing · ex parte appeal deadlines · euipo mp3 sound mark · madrid reproduction requirement · section 8 specimen drift

What this checklist is for

Filing a U.S. application for a mark that is a color, a sound, a scent, a movement, a texture, a hologram, or a three-dimensional configuration — anything the register was not designed to hold. Work it top to bottom and you will either have a registration or a documented decision not to chase one.

Who should use it. Prosecution counsel and trademark paralegals running the file; in-house counsel approving the spend; founders and brand directors who need to know why the answer is sometimes no.

What this is not. It does not re-teach the doctrine. Why color can never be inherently distinctive, why In re Forney Industries, Inc., 955 F.3d 940 (Fed. Cir. 2020), is narrower than the headlines, and why functionality is terminal in a way descriptiveness is not are covered in Color, Sound, Scent, and Motion: Registering Non-Traditional Trademarks. The reasoning behind each move below — the strategy, the model language, the cost tables — is in Registering a Non-Traditional Mark: A Practitioner's Guide to Drawings, Descriptions, and Functionality Refusals. This is the desk version.

What you'll need before you start

The person who chose the feature, on the phone or in a room — the designer, the sound studio, the perfumer, the packaging engineer. Not the marketing lead.
Technical source files: the composer's notation or session file, the animation's frame timings and duration, the coating or fragrance specification sheet, the Pantone or hex values from brand standards.
Dated advertising and packaging from the launch forward, and the annual advertising spend and unit sales broken out by year.
A camera and four hours for the shelf audit.
A USPTO.gov account with verified identity, and the client's entity name and state of formation exactly as it appears on the corporate record.
A budget number. A color application defended to registration is a $45,000-$90,000 project; a clean sound mark is $4,000-$9,000.

The worked example — Brindle & Co. A fictional Portland cold-brew roaster, launched March 2023 in matte copper cans, $1.4 million in advertising by the time it files and $2.1 million by 2026. Four candidate assets: the copper can color; a three-note marimba figure a studio composed in 2023 and that plays at the end of every video ad and on launch of the Brindle app; a 1.6-second animation in which a bar sweeps in and splits into three stacked stripes above the word BRINDLE; and a cedarwood-and-blood-orange scent printed on the liner of the subscription carton. By Phase 12, two are registered, one is abandoned, and one was never filed. That distribution is normal.

The phases at a glance

| Phase | What you produce | Elapsed | Typical cost | |---|---|---|---| | 1 — Classify | A mark-type determination and an asset inventory | 2 days | $500-$1,500 | | 2 — Functionality screen | The interview memo and a go/no-go per asset | 1 week | $1,500-$3,000 | | 3 — Distinctiveness screen | Shelf audit, perception finding, exclusivity count | 1 week | $1,000-$3,000 | | 4 — Choose the vehicle | Register, basis, goods, bare claim or composite | 1 week | $1,500-$4,000 | | 5 — Drawing and description | The property line, in final form | 1-2 days per mark | $1,500-$5,000 | | 6 — Specimen | A compliant file or a mailed article | 1 week | $500-$2,000 | | 7 — Section 2(f) evidence | The acquired-distinctiveness package | 4-12 weeks | $6,000-$60,000 | | 8 — File and docket | Serial number, filing receipt, calendar | 1 day | $350/class government | | 9 — Office action | A response answering every ground | 6-10 weeks | $4,000-$12,000 | | 10 — Final refusal | Reconsideration, appeal, narrow, or stop | 3-6 months | $0-$35,000 | | 11 — Foreign filing | EUIPO, UK, or direct national filings | 4-10 months | Varies | | 12 — Survival | Specimen archive, drift review, Section 8 | Years 1-6 | $500-$1,000/filing |

Phase 1 — Classify the mark and open the file

[ ] Name the mark type in writing, using the USPTO's own vocabulary: color, sound, scent, flavor, motion, hologram, texture/touch, three-dimensional configuration, or hashtag.
- Why. Each type has its own drawing rule, specimen rule, and distinctiveness rule. Guessing at Phase 1 produces a defective application at Phase 8.
- Authority. TMEP §§ 807.09 (non-visual marks), 807.10 (three-dimensional), 807.11 (motion), 1202.05 (color), 1202.13 (scent), 1202.14 (holograms), 1202.15 (sound), 1202.18 (hashtags).
[ ] Separate the assets into one row per candidate mark and refuse to bundle them.
- Trap. "The Brindle brand experience" is not a mark. An application must be for a single mark; an unbounded claim covering variations is more than one mark and dies on that ground alone. In re Upper Deck Co., 59 U.S.P.Q.2d 1688 (T.T.A.B. 2001); TMEP § 807.01.
[ ] Decide whether the feature is really trade dress wearing a costume.
- Why. A bottle shape, a store layout, or a total product look belongs in a trade dress file, where the Wal-Mart packaging/design divide governs. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212 (2000). See the practitioner's guide to protecting trade dress and the trade dress protection checklist.
[ ] Run the register search now, before anyone is emotionally committed, accepting that it will be over-inclusive and incomplete.
- How. There are no reliable search codes. For color, query "the mark consists of the color" in the Description of the Mark field with 2(f) in the Register field. For sound and scent, combine Mark Drawing Code 6 (no drawing required) with sound, scent, or fragrance in the description field. For motion, search "motion mark" or "moving image" in the description field with Drawing Code 2.
- Trap. A knockout that returns nothing is not clearance. See Trademark Clearance Searching: What a Knockout Search Can and Cannot Tell You and the trademark clearance search checklist.
[ ] Pull the file histories of three comparable applications in TSDR — one that registered and two that died — and read the office actions.
- Why. The prosecution history tells you the exact description language an examining attorney accepted, the specimen that got refused, and the argument that worked. This is the cheapest research in the matter.
[ ] Confirm the ordinary marks are already filed or already registered: the word mark, the logo, and the composite label.
- Why. These do most of the enforcement work and register in a third of the time. See the Pre-Filing Trademark Application Checklist.

Brindle output. Four rows: color (goods), sound (goods + services), motion (goods + services), scent (packaging). Word mark BRINDLE registered in 2023; can label design filed as a composite the same month.

Phase 2 — Run the functionality screen

[ ] Interview the person who chose the feature and ask, five different ways, why is it this and not something else? Write every answer down verbatim before you form a view.
- Trap. Clients do not volunteer the functional reason, because to them it is engineering, not law. It becomes law the moment the Rule 2.61(b) information requirement arrives — by which time you have taken a position on the record.
[ ] Apply Inwood first and stop there if it is satisfied: is the feature essential to the use or purpose of the article, or does it affect the article's cost or quality?
- Authority. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10 (1982); Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995). Where Inwood functionality is established, the availability of alternative designs does not rescue the mark. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33-34 (2001).
[ ] Score the four Morton-Norwich factors on paper and attach the underlying documents.
- The four. A utility patent disclosing the advantage; the applicant's own advertising touting it; the availability of alternatives to competitors; and whether the feature yields a simpler or cheaper manufacturing method. In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1340-41 (C.C.P.A. 1982).
- Trap. A feature merely depicted in a patent, not claimed, is still probative. In re Loggerhead Tools, LLC, 119 U.S.P.Q.2d 1429 (T.T.A.B. 2016).
[ ] Search the client's own patent portfolio and published applications for the feature, and search the supplier's too.
[ ] Read six months of the client's marketing copy and flag every sentence that describes a benefit rather than an identity.
- Why. Upper Deck lost on advertising that touted its holograms as an anti-counterfeiting feature. Loggerhead lost on advertising highlighting the very action it sought to register. Your client's marketing department is the examiner's best witness.
[ ] Ask the aesthetic-functionality question separately: would exclusive use of this feature put competitors at a significant non-reputation-related disadvantage?
- Authority. Qualitex, 514 U.S. at 165; In re Florists' Transworld Delivery, Inc., 106 U.S.P.Q.2d 1784, 1790-93 (T.T.A.B. 2013) (black for flower packaging). The doctrine and the circuit split are in Trade Dress and the Functionality Doctrine.
[ ] Kill the asset here if the honest answer names any purpose other than recognition. Do not file it on the Supplemental Register instead.
- Why. Functional matter is barred from the Principal Register, 15 U.S.C. § 1052(e)(5), and from the Supplemental Register, 15 U.S.C. § 1091(c); it is cancellable at any time, 15 U.S.C. § 1064(3); and it survives incontestability as a defense, 15 U.S.C. § 1115(b)(8).

Trap. The functionality screen is the only phase where spending an extra $2,000 reliably saves $20,000. Brindle's packaging engineer says the matte copper coating was chosen partly for the premium look and partly because the pigment load improves opacity and cold brew degrades under light. That second clause is a functionality problem with a supplier spec sheet behind it, and an examining attorney can demand the sheet.

Phase 3 — Screen distinctiveness, exclusivity, and perception

[ ] Determine whether the mark type can be inherently distinctive at all.
- The rule. Color, scent, flavor, texture, and product design: never. Sound: yes, if arbitrary, unique, or distinctive rather than a sound the goods make in ordinary operation. In re General Electric Broadcasting Co., 199 U.S.P.Q. 560 (T.T.A.B. 1978); TMEP § 1202.15. Multi-color packaging arrangements: arguable under Forney, 955 F.3d at 945-48.
[ ] Do the shelf audit. Four stores, photograph every competing product with the date visible, count how many use the feature.
- Why. Third-party use, not advertising spend, decides Section 2(f) in these files. General Mills lost yellow for Cheerios packaging on roughly two dozen third-party yellow cereal boxes despite a billion dollars of advertising. In re General Mills IP Holdings II, LLC, 124 U.S.P.Q.2d 1016, 1019-25 (T.T.A.B. 2017).
- Trap. If you do not run the audit, the examining attorney will, and the record will be built by someone who wants you to lose. More than two or three competitors using the feature and the claim is dead before drafting.
[ ] Run the audio equivalent for a sound mark: pull the last twenty competitor advertisements and app launch sequences and listen to them end to end.
[ ] Answer the perception question: when does the consumer encounter the feature — before the purchase decision or after it?
- Why. A source identifier perceptible only after purchase cannot do a trademark's work. That structural holding has kept every flavor application off the register. In re N.V. Organon, 79 U.S.P.Q.2d 1639 (T.T.A.B. 2006).
[ ] For a scent, confirm on the record that the scent is not an inherent attribute or natural characteristic of the goods.
- Authority. In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990); TMEP § 1202.13. Perfume, candles, and air fresheners are refused on sight.
[ ] Write the one-page filing memo: asset, predicted refusals, recommendation, dollar figure. Send it before you file anything.

Brindle output. Copper: four of thirty-one ready-to-drink coffees in copper or bronze cans, two more with copper foil labels — exclusivity is gone. Sound: no competing marimba figure found; arguably inherently distinctive. Motion: fine. Scent: the cedar liner sits inside a carton the customer opens at home days after paying — a lovely brand experience and an unregistrable one. Recommendation: file sound and motion; file the composite label with color claimed as a feature; do not file the bare color; do not file the scent.

Phase 4 — Choose the vehicle

[ ] Choose between a bare sensory claim and a composite registration, and put the reasoning in the memo.
- Why. A bare claim ("the color copper applied to the entire exterior of the goods") draws every refusal in the manual but covers a great deal when granted — the Board read a registration for "blue" on catheters as reaching teal on guiding sheaths. In re Cook Medical Technologies LLC, 105 U.S.P.Q.2d 1377 (T.T.A.B. 2012). A composite examines like an ordinary logo and registers in months instead of years.
- Practice. File the composite first and the bare claim later, never the reverse. A prior Principal Register registration of the same matter for related goods is itself one of the three statutory routes to acquired distinctiveness. 37 C.F.R. § 2.41(a)(1).
[ ] Pick the register. Use the Supplemental Register only for a non-distinctiveness problem, never for a functionality problem.
[ ] Pick the filing basis and record the evidence supporting it.

| Basis | Statute | Fits when | The catch | |---|---|---|---| | Use in commerce, § 1(a) | 15 U.S.C. § 1051(a) | The feature is in the market with dated specimens | The specimen must match the description on filing day | | Intent to use, § 1(b) | 15 U.S.C. § 1051(b) | A sonic logo launching next quarter | You cannot claim acquired distinctiveness for a mark you have not used | | Foreign registration, § 44(e) | 15 U.S.C. § 1126(e) | You registered at EUIPO or the UKIPO first | Same mark required; a foreign registration does not answer U.S. functionality | | Foreign priority, § 44(d) | 15 U.S.C. § 1126(d) | Within six months of the first foreign filing | Priority only; you still need a § 1 or § 44(e) basis | | Madrid extension, § 66(a) | 15 U.S.C. § 1141f | Extending an international registration | WIPO's reproduction requirement — see Phase 11 |

[ ] Draft the identification of goods and services so the sensory feature sits outside the natural attributes of the goods.
- Why. "Personal security alarms" made Vertex's alarm an operating sound by definition. In re Vertex Group LLC, 89 U.S.P.Q.2d 1694 (T.T.A.B. 2009).
- Trap. Use an ID Manual entry. A free-form identification carries a $200-per-class surcharge, plus $200 for each additional 1,000 characters, and examines slower. See the guide to drafting an identification of goods and services and the goods and services identification checklist.
[ ] For an intent-to-use filing, calendar the Notice of Allowance path now.
- Reference. Intent-to-Use Applications, the guide from notice of allowance to registration, and the statement of use filing checklist.

Phase 5 — Draft the drawing and the description

[ ] Establish which drawing regime applies before you commission any artwork.

| Mark type | Drawing? | What to file | Authority | |---|---|---|---| | Sound, scent, flavor, other wholly non-visual | No | Detailed written description only | 37 C.F.R. § 2.52(e); TMEP § 807.09 | | Color | Yes | Color drawing, unclaimed matter in broken lines, plus a color claim and a description | 37 C.F.R. § 2.52(b)(1)-(3); TMEP § 1202.05(d)-(e) | | Motion / hologram | Yes | One point in the movement, or up to five freeze frames, plus a description | TMEP §§ 807.11, 1202.14 | | Three-dimensional | Yes | A single rendition; petition the Director for waiver if one view cannot do it | TMEP § 807.10 |

[ ] Write the description from the specimen, not from the creative brief, and treat every word as permanent.
- Why. For an ordinary logo the drawing controls and the description explains. Here it inverts: the description is the claim, and for sound and scent it is the only claim there is.
- Authority. An amendment may not materially alter the mark. 37 C.F.R. § 2.72; TMEP § 807.14. You can narrow. You cannot widen.
[ ] Describe appearance and never purpose. Delete every clause that names a benefit.
- Trap. "The mark consists of the color copper, which protects the contents from light degradation" is a functionality confession filed under oath.
[ ] Use ordinary color words in the United States and keep Pantone references in internal brand standards.
- Why. "The color blue" was read to cover teal in Cook Medical; "PANTONE 877 C" invites a competitor to sit one step away on the swatch book. This advice reverses at EUIPO — see Phase 11.
[ ] For a sound, describe it the way a composer would: instrument, notes, key, tempo, duration, decay.
- Model. "The mark is a sound. The mark consists of three marimba notes — C5, E5, and G5 — struck in ascending sequence as eighth notes at a tempo of 96 beats per minute, with the final note sustained for two beats and decaying to silence."
- Trap. "A pleasant three-note chime" is unexaminable and unenforceable. Route the description through no one but you; a marketing reviewer's adjective is the most expensive sentence in the file.
[ ] For a motion mark, choose five freeze frames over one, arrange them left to right in a single image file, number them, and match them one-for-one to the sequence in the description.
- Trap. Two different end states in one drawing is two marks. Brindle's agency delivers six frames showing two different final stripe arrangements for different aspect ratios; an examining attorney will call that a Upper Deck problem. Pick the sequence you actually use.
[ ] For a color drawing, verify that everything not claimed appears in broken lines.
- Why. Solid lines around the can silhouette claim the shape of the can as well, which imports a product-design functionality analysis and a Wal-Mart inherent-distinctiveness problem you did not need.
- Format. Color JPG, 250 to 944 pixels per side, 300 to 350 dpi, mark occupying most of the frame, no background, shadow, or reflection. 37 C.F.R. § 2.53. A studio product shot is the wrong asset; you want a flat rendering.
[ ] Confirm the description, the drawing, and the specimen all say the same thing.
- Authority. TMEP §§ 807.12(a), 808.03. A mismatch cannot be cured by an amendment that materially alters the mark.
[ ] For a scent, include the non-inherency sentence and be prepared to prove it.
- Model. "The mark consists of a scent of cedarwood with blood orange top notes, applied to the interior liner of the applicant's packaging. The mark is a scent mark. The scent is not a natural or inherent characteristic of the goods."

Phase 6 — Produce and test the specimen

[ ] Produce the specimen before you finalize the description, and describe what the specimen actually shows.
- Why. The elegant description of the sonic logo in the sound designer's session file rarely matches the shorter, differently pitched version that ships in the app. The specimen is ground truth.

| Mark type | What counts | Format and ceiling | Authority | |---|---|---|---| | Sound | Enough of an audio or video recording to show the sound used with the goods or services | WAV, WMV, WMA, MP3, MPG, AVI; audio ≤ 5 MB, video ≤ 30 MB | TMEP § 904.03(f) | | Motion | A clip or series of stills depicting the entire movement, not just the drawing frame | Same types and ceilings | TMEP § 904.03(l) | | Scent / flavor | The goods themselves, mailed | Cannot be transmitted electronically | 37 C.F.R. § 2.56(d)(1); TMEP § 904.03(m) | | Texture | The article itself, or a photograph plus a physical sample | Physical sample by mail where needed | 37 C.F.R. § 2.56(d)(1) | | Color | Photographs of the actual goods or packaging showing the color as claimed | JPG or PDF | TMEP § 1202.05(f) |

[ ] Match the specimen to the class. Advertising is proper use for services and improper use for goods.
- Trap. Brindle's first sound specimen is a thirty-second video advertisement. That works for the app services in Class 42 and fails for the coffee in Class 30, which needs labels, tags, containers, or point-of-sale displays. The fix is a screen recording of the app's purchase screen where the chime plays as the order confirms and the goods are visible.
- Reference. The general failure modes — mock-ups, webpages with no ordering capability, mark-to-drawing mismatch — are in Specimen Refusals: Why the USPTO Rejected Your Proof of Use.
[ ] Put the URL and the access date into any web-captured specimen, including in a slate frame on a video capture. 37 C.F.R. § 2.56(c).
[ ] Compress before you upload. Export the relevant seconds as an MP3 under 5 MB and keep the master in the client file.
[ ] For a mailed physical specimen, send it with tracking, file a contemporaneous electronic statement that it has been mailed, and calendar confirmation of receipt.
- Trap. A scented product in the post is not timestamped by the electronic system. Nothing in the file proves it exists until someone opens the envelope.
[ ] Verify the dates of first use anywhere and first use in commerce against invoices, not memory, before anyone signs.
- Why. The declaration is signed under penalty of the criminal false-statement provisions, and a knowingly false material statement is the raw material of a fraud claim. See Fraud on the Trademark Office: What In re Bose Actually Requires and the trademark fraud claim and self-audit checklist.

Phase 7 — Build the Section 2(f) evidence package

[ ] Identify which of the three statutory routes you are on. 37 C.F.R. § 2.41(a).
- Route 1. Prior Principal Register registrations of the same mark for related goods.
- Route 2. A verified statement of substantially exclusive and continuous use for the five preceding years. Almost never sufficient for a color mark, and TMEP § 1202.05(a) tells examiners so.
- Route 3. Actual evidence. Assume you are here.
[ ] Collect against the Converse factors, which are also the categories that persuade an examining attorney.
- Authority. Converse, Inc. v. International Trade Commission, 909 F.3d 1110, 1120 (Fed. Cir. 2018): association by actual purchasers, usually by survey; length, degree, and exclusivity of use; amount and manner of advertising; sales and number of customers; intentional copying; unsolicited media coverage.

| Evidence | Weight in a color or scent file | Realistic cost | What ruins it | |---|---|---|---| | Recognition survey | Highest single item | $25,000-$60,000 | Wrong universe; leading stimulus; testing the composite instead of the bare feature | | Your own third-party non-use audit | Very high | $2,000-$5,000 | Letting the examiner build the record first | | Unsolicited media calling the feature a brand signal | High | Collection only | Clips describing the feature as a benefit | | Advertising pointing at the feature as identity | High | Collection only | "Keeps it colder" instead of "look for the copper can" | | End-user declarations | Moderate to high | $5,000-$15,000 | Form affidavits in identical words; distributors only, no consumers | | Sales and advertising figures by year | Moderate | Low | Aggregate lump sums with no breakout by feature or year | | Length of use alone | Low | None | Offering it as the whole case, as in General Mills |

[ ] Draft declarations in each affiant's own words and include actual consumers, not only distributors in privity with the applicant.
- Model. "On two occasions I have picked up a copper can, believed it to be Brindle, and put it back when I read the label and found it was not." That sentence is evidence of source assumption; enthusiasm is not.
[ ] Decide whether to plead Section 2(f) outright or in the alternative, and get this right the first time.
- The rule. A Section 2(f) claim concedes the matter is not inherently distinctive. TMEP § 1212.02(b). For color, scent, texture, and product design there is nothing to concede — plead it in the application with the evidence attached. For sound and motion, argue inherent distinctiveness and reserve Section 2(f) as an alternative claim, which is not a concession. TMEP § 1212.02(c).
- Trap. Powermat filed five chirp applications with no Section 2(f) claim; when the Board classified them as operating sounds it declined to look at the advertising evidence at all. In re Powermat Inc., 105 U.S.P.Q.2d 1789 (T.T.A.B. 2013). Refiled in 2014 with Section 2(f) claims, the same marks registered.
[ ] Commission any survey with the litigation standard in mind, not the examination standard.
- Reference. Consumer Surveys in Trademark Cases, the guide to commissioning and attacking a trademark survey, and the survey design and challenge checklist.
[ ] Index the package with an exhibit list and a two-page cover declaration tying each exhibit to a Converse factor.
- Reference. The full architecture is in the guide to claiming acquired distinctiveness at the USPTO; the collection schedule is the secondary meaning evidence checklist. Background doctrine: From Descriptive to Distinctive.

Phase 8 — File and docket

[ ] Select the correct mark format in Trademark Center's Mark Information section and check the specific box — "the mark consists of a sound," "the mark has motion," or "color(s) is/are claimed as a feature of the mark."
- Trap. Filing a sound mark as a standard character mark, or a color mark without the color claim, produces an incomplete application and a first office action about formalities instead of substance.
[ ] Paste the final description into the Description of the Mark field verbatim from your approved draft. Do not retype it.
[ ] Enter the color claim as a separate statement naming each color. 37 C.F.R. § 2.52(b)(1).
[ ] Attach the drawing file, the specimen, the Section 2(f) evidence, and the exhibit index in one submission.
[ ] Confirm the fee arithmetic before you sign: $350 base per class, plus $100 per class if the application does not include all the information required for the reduced-fee path, plus $200 per class for a free-form identification and $200 for each additional 1,000 characters.
[ ] Have the correct person sign, with the entity name matching the corporate record exactly.
[ ] Save the filing receipt and serial number, and docket the four dates that matter: the six-month Paris priority date, the expected first-action window, the five-year Section 8 window, and an annual specimen-archive reminder.
- Reference. Docketing Deadlines: Never Miss a Renewal and the Trademark Portfolio Management Toolkit.
[ ] Tell the client, in writing, what the realistic timeline is: roughly seven to nine months to a first action, twelve to eighteen months to registration on a clean file, three to five years if it goes to appeal.
- Reference. The baseline is in What Happens After You File: The Examination Timeline.

Brindle output. Sound and motion applications filed 11 April 2024, both in Classes 30 and 42, both under § 1(a), both with no Section 2(f) claim. The copper color application is filed 30 May 2024 over the memo's advice, with a Section 2(f) claim and a fifty-page evidence package.

Phase 9 — Work the office action

[ ] Calendar the response deadline the day the action issues: three months from the issue date for applications under Section 1 or 44, extendable once by three months on a request filed before the original date expires, with a $125 fee. Applications under Section 66(a) get six months and no extension.
- Authority. 37 C.F.R. § 2.62(a); 37 C.F.R. § 2.65(a) (abandonment). See The 3-Month Office Action Deadline.
[ ] Read the Rule 2.61(b) information requirement first, before the refusals.
- Why. It is the Morton-Norwich factors turned into a document request: utility patents, advertising and packaging copy, alternative designs and their relative cost, manufacturing economics, and supplier or laboratory documentation. 37 C.F.R. § 2.61(b); TMEP § 814.
- Trap. An incomplete response to an information requirement is itself an independent ground of refusal. Answer completely, truthfully, and precisely — precision is where the non-functionality argument starts. Brindle's answer states the coating specification and adds that the clear-coated white cans in the same product line show identical shelf-life results.
[ ] Order the response by what wins, not by the order the examiner used.
[ ] Against functionality, argue Morton-Norwich factor by factor with attached evidence: no utility patent (under oath), advertising that does not tout utility, abundant and comparably priced alternatives, and no manufacturing advantage.
- Limit. If the examiner establishes Inwood functionality, alternatives do not save you. TrafFix, 532 U.S. at 33-34.
[ ] Against failure to function, file perception evidence rather than argument: unsolicited media calling the feature a brand signal, consumer declarations, third-party social posts identifying the company by the feature, survey data.
[ ] Against ornamentality, substitute a specimen showing non-ornamental use — a hangtag, a neck label, a spec sheet — before reaching for secondary source or acquired distinctiveness.
- Authority. TMEP § 1202.03; TMEP § 1202.03(f)(i)-(ii) (secondary source).
[ ] Against Section 2(f) insufficiency, identify precisely what the examiner said was missing — almost always exclusivity or consumer-side proof — and fill exactly that gap. Do not resubmit the same evidence in a longer brief.
[ ] Against a Section 2(d) refusal citing another sensory registration, read the cited registration as broadly as Cook Medical read "blue," then consider whether the answer is in a different proceeding: a petition to restrict or cancel under 15 U.S.C. §§ 1064, 1068, or expungement or reexamination under 15 U.S.C. §§ 1066a-1066b.
- Reference. Filing a Petition for Cancellation and Responding to a §2(d) Likelihood-of-Confusion Refusal.
[ ] For any Section 2 statutory bar riding along in the same action, run the diagnosis separately.
- Reference. The Section 2 refusal response checklist, the guide to overcoming a Section 2 refusal, and the Trademark Refusals and Statutory Bars Toolkit.
[ ] Confirm any amendment you propose is not a material alteration before you file it. 37 C.F.R. § 2.72.
[ ] Use the mechanical shell and the process checklist rather than rebuilding both.
- Reference. Response to Office Action — Template, the office action response checklist, and the Office Action Response Toolkit.

Brindle output. The sound application draws a description requirement (specify instrument and tempo) and a Class 30 specimen refusal; both are fixed in one response and the mark registers fourteen months after filing on the General Electric inherent-distinctiveness theory, with no Section 2(f) claim. The motion application draws a more-than-one-mark refusal on the six-frame drawing and a drawing/description mismatch; substituting a five-frame drawing removes matter rather than adding it, so it is not a material alteration, and the mark registers nineteen months after filing. The copper color application draws four grounds — not inherently distinctive, failure to function, Section 2(f) insufficient given twenty-two third-party uses the examiner attached, and a Rule 2.61(b) requirement about light protection. Three are survivable.

Phase 10 — Final refusal: reconsider, appeal, narrow, or stop

[ ] Calendar three months from the final refusal, extendable once by three months for the same $125, to file a request for reconsideration, a notice of appeal, or both. 37 C.F.R. §§ 2.63(b), 2.64, 2.141, 2.142(a).
[ ] File both together as the default. The appeal preserves the deadline while the examining attorney considers new evidence; the Board suspends and remands.
[ ] Put every piece of evidence you will ever want the Board to see into the request for reconsideration.
- Why. New evidence is not admissible once the appeal record closes. 37 C.F.R. § 2.142(d). This single rule drives the whole sequence.
[ ] Answer the stop question honestly: is the refusal grounded in functionality, and can you actually rebut Inwood?
- If no. Abandon the sensory claim. No register accepts functional matter and a registration obtained anyway is cancellable at any time. 15 U.S.C. § 1064(3).
[ ] If the gap is curable with evidence obtainable in ninety days, file the request for reconsideration with that evidence attached.
[ ] If a narrower claim would register, amend where it is not a material alteration and refile where it is.
- Template. Louboutin's registration was narrowed under 15 U.S.C. § 1119 to a red outsole only where it contrasts with the rest of the shoe. Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206, 227-28 (2d Cir. 2012). A contrast-limited or position-limited claim registers where a total claim does not.
[ ] Amend to the Supplemental Register only if non-distinctiveness is the sole surviving ground.
[ ] Price the appeal before recommending it: $225 per class for the notice, $200 per class for the brief, $500 for an optional oral hearing, and $15,000-$35,000 in counsel fees for a well-briefed functionality appeal. Expect roughly six months to the examining attorney's brief and twelve to twenty-four months to a decision.
- Reference. Taking an Ex Parte Appeal, the ex parte appeal checklist, Appealing a Final Refusal, and the TTAB Practice Toolkit.
[ ] Choose the review route deliberately if you lose at the Board: the Federal Circuit on the closed record under 15 U.S.C. § 1071(a), or a district court civil action under § 1071(b), which admits new evidence.

Brindle output. The copper application is abandoned after the final refusal. The coating spec sheet says what it says. Sunk cost: $14,200 against a Phase 3 estimate of $12,000-$18,000, which is why the general counsel does not mind.

Phase 11 — File abroad, in the right order

[ ] Reverse your usual sequence for sound and motion marks: file at EUIPO first, then come home under Section 44(e).
- Why. The EU abolished the graphic-representation requirement effective 1 October 2017; a sign qualifies if represented clearly, precisely, self-containedly, accessibly, intelligibly, durably, and objectively — the Sieckmann criteria. Sieckmann v. Deutsches Patent- und Markenamt, Case C-273/00 (E.C.J. 12 Dec. 2002). EUIPO accepts an MP3 for a sound mark and an MP4 for a motion or multimedia mark, formats the USPTO takes only as a specimen.
[ ] Get musical notation into the U.S. file even though the USPTO does not require it.
- Why. A stave with clef, key, notes, and tempo travels internationally. A paragraph of English does not, and a Madrid designation of a prose-only sound mark can draw a provisional refusal you cannot cure. See WIPO Office Actions and Provisional Refusals.
[ ] Add the color code you deliberately omitted at home. EU color marks require a reproduction plus a reference to a generally recognized color code, and a combination must be arranged in a predetermined and uniform manner.
- Authority. Libertel Groep BV v. Benelux-Merkenbureau, Case C-104/01 (E.C.J. 6 May 2003); Heidelberger Bauchemie GmbH, Case C-49/02 (E.C.J. 24 June 2004). A description permitting more than one configuration fails. Société des Produits Nestlé SA v. Cadbury UK Ltd [2013] EWCA Civ 1174.
[ ] Price a Madrid designation against direct national filings before you commit.
- Reference. Filing an International Trademark via the Madrid Protocol, Designating Countries Under the Madrid System, the Madrid Protocol Application Checklist, The Madrid Protocol: How International Registration Works, and the International Trademark Toolkit.
[ ] Do not chase scent protection outside the United States. Sieckmann rejected a chemical formula, a verbal description, and a deposited sample, and no office has since accepted an olfactory representation.
[ ] Claim Paris priority within six months of the first foreign filing if you are moving in that direction. 15 U.S.C. § 1126(d).

Phase 12 — Keep it alive

[ ] Archive a compliant specimen every year: the audio file, the video clip, dated packaging photographs, a scented sample in a sealed foil pouch with a dated label.
- Why. More non-traditional registrations have died of neglect than of litigation. The Clarke plumeria scent, Reg. No. 1,639,128 — the first scent mark in the United States — was cancelled in 1997 for failure to file an acceptable Section 8 declaration. So were the velvet-textured wine bottle covering, Reg. No. 3,155,702, the leather-textured wrap, Reg. No. 3,896,100, and Powermat's chirp registrations.
[ ] Docket a "mark drift" review at year four, not year five.
- Why. Brands redesign. The animation gets shortened for social video; the chime gets re-recorded a semitone higher. A Section 8 declaration needs a current specimen showing the mark as registered, and a material alteration cannot be fixed by amendment. 37 C.F.R. § 2.72.
[ ] File the Section 8 declaration between the fifth and sixth anniversaries, the combined Sections 8 and 9 filing in the year before each ten-year anniversary, and Section 15 once you have five consecutive years of use.
- Reference. Filing a Section 8 Declaration of Continued Use, the Section 8 & 9 Renewal Checklist, Section 15 Incontestability, and Trademark Renewal Deadlines Explained.
- Trap. Incontestability does not cure functionality, which remains a defense forever. 15 U.S.C. § 1115(b)(8).
[ ] Build a manual watch routine, because no watch service listens or smells.
- How. Quarterly review of competitor advertising and app-store listings, a class-based alert, and an internal channel where sales staff report look-alikes. See Trademark Watch Services: What to Monitor and the Brand Enforcement Toolkit.
[ ] Record the registration in the portfolio inventory alongside the word mark and the composite, with the specimen archive location and the drift-review date.
- Reference. Trademark Portfolio Inventory — Template and the Annual Trademark Portfolio Review Checklist.

Common Mistakes

Filing the bare sensory claim first. The composite registers in months, generates use evidence, and supplies a statutory route to acquired distinctiveness for the bare claim later. 37 C.F.R. § 2.41(a)(1).
Skipping the shelf audit because the client is confident. Exclusivity, not spend, decides color and scent files. A billion dollars of advertising did not save yellow Cheerios packaging.
Letting marketing write the description. Adjectives are unexaminable and benefits are confessions. "A warm, luxurious copper" and "the copper finish keeps your cold brew colder" both cost more than they read.
Solid lines in a color drawing. You have just claimed the shape of the container and imported a product-design analysis nobody wanted.
One freeze frame, or six. One yields a registration for a still image the client never uses. Six with two endings is more than one mark.
Pleading Section 2(f) on a sound mark reflexively. It concedes the mark is not inherently distinctive. Argue General Electric first and reserve 2(f) as an alternative. TMEP § 1212.02(c).
Omitting Section 2(f) on a color mark. The mirror error, and worse. There is nothing to concede; plead it with the evidence attached and do not make the examiner ask.
Answering the Rule 2.61(b) requirement partially. Incompleteness is an independent ground of refusal, and a shaded answer is worse than a bad fact.
Proposing the Supplemental Register in response to a functionality refusal. Functional matter is barred from both registers. 15 U.S.C. §§ 1052(e)(5), 1091(c). It signals you did not read the refusal.
Uploading the master audio file. It exceeds the 5 MB ceiling and the submission fails at the worst possible moment.
Mailing a scent specimen without a contemporaneous electronic statement. Nothing in the file proves it exists.
Holding evidence back for the appeal brief. The record closes when the appeal is filed. 37 C.F.R. § 2.142(d).
Letting the registration lapse. Section 8 has killed more of these marks than any examining attorney.

Deadlines at a Glance

| Event | Clock | Extension | Fee | Authority | |---|---|---|---|---| | Response to office action, §§ 1 and 44 | 3 months from issue date | One 3-month extension, requested before the original date | $125 | 37 C.F.R. § 2.62(a) | | Response to office action, § 66(a) | 6 months from issue date | None | — | 37 C.F.R. § 2.62(a) | | Abandonment for failure to respond | Automatic on the deadline | — | — | 37 C.F.R. § 2.65(a) | | Petition to revive | 2 months from the notice of abandonment | — | $150 | 37 C.F.R. § 2.66 | | Request for reconsideration or notice of appeal after final refusal | 3 months | One 3-month extension | $225/class (appeal) | 37 C.F.R. §§ 2.63(b), 2.64, 2.142(a) | | Appeal brief | 60 days from the notice of appeal | On motion | $200/class | 37 C.F.R. § 2.142(b) | | Evidence closes | On filing the appeal | — | — | 37 C.F.R. § 2.142(d) | | Opposition period | 30 days from publication | Extensions available | Varies | 37 C.F.R. §§ 2.101(c), 2.102 | | Statement of use after Notice of Allowance | 6 months | Five 6-month extensions, 36 months maximum | $125/class extension; $150/class SOU | 37 C.F.R. §§ 2.88, 2.89 | | Paris Convention priority | 6 months from first foreign filing | None | — | 15 U.S.C. § 1126(d) | | Section 8 declaration | Between the 5th and 6th anniversaries | 6-month grace with surcharge | $325/class | 15 U.S.C. § 1058 | | Combined Sections 8 and 9 | Within the year before each 10-year anniversary | 6-month grace with surcharge | $325 + $325/class | 15 U.S.C. §§ 1058, 1059 | | Section 15 incontestability | Any time after 5 consecutive years of use | — | $250/class | 15 U.S.C. § 1065 |

Government fees are the schedule in effect since 18 January 2025 and are adjusted periodically. Confirm on the USPTO fee page before quoting a client.