T.M.E.P. § 1402.01
Specifying the Goods and/or Services - in General
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1402.01 Specifying the Goods and/or Services - in General
A written application must specify the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. 15 U.S.C. §§1051(a)(2) and 1051(b)(2); 37 C.F.R. 2.32(a)(6). To "specify" means to name in an explicit manner. The identification of goods or services should set forth common names, using terminology that is generally understood. For products or services that do not have common names, the applicant should use clear and succinct language to describe or explain the item. Technical or esoteric language and lengthy descriptions of characteristics or uses are not appropriate.
The language used to describe goods or services should be understandable to the average person and should not require an in-depth knowledge of the relevant field. An identification may include terms of art in a particular field or industry, but, if these terms are not widely understood by the general population, the identification should include an explanation of the specialized terminology.
The identification of goods or services must be specific, definite, clear, accurate and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953).
The accuracy of identification language in the original application is important because the identification cannot later be expanded. See 37 C.F.R. 2.71(a); TMEP §§1402.06 and 1402.07 et seq.; In re M.V Et Associes, 21 USPQ2d 1628 (Comm'r Pats. 1991).
1402.01(a) General Guidelines for Acceptable Identifications of Goods or Services
With few exceptions, an identification of goods and services will be considered acceptable if it:
- Is written in English;
- Describes the goods and/or services so that an English speaker could understand what the goods and/or services are, even if the grammar or phrasing is not optimal;
- Meets the standards (not necessarily the language) set forth in the Acceptable Identification of Goods and Services Manual;
- Is not a class heading; and
- Is in the correct class.
Deference should be given to the language and the classification set forth by the applicant in the original application. Obvious spelling errors in an identification of goods/services may be corrected by examiner's amendment without contacting the applicant. See TMEP §707.02.
1402.01(b) Identification of Goods and Services in a §44 Application
The identification of goods and services in an application based on §44 of the Trademark Act, 15 U.S.C. 1126, must comply with the same standards that govern other applications. The applicant must identify the goods and services specifically, to enable the Office to classify the goods and services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. 1052(d).
Foreign registrations will often include broad statements of the identification of goods and services. In many cases the identification is merely a repetition of the entire general class heading for a given class. These broad identifications are generally unacceptable in United States applications. The identification of goods or services in the United States application must be definite and specific even if the foreign registration includes an overly broad identification. In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
Furthermore, in an application based on §44 of the Trademark Act, the identification of goods and services covered by the §44 basis in the United States application may not exceed the scope of the goods and services identified in the foreign registration. Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re LšwenbrŠu Mźnchen, 175 USPQ 178 (TTAB 1972). However, if the applicant also relies on use in commerce or intent-to-use in commerce, the identification of goods or services may include items or services not listed in the foreign registration if the applicant specifically limits the §44 basis to the goods and services covered by the foreign registration. 37 C.F.R. 2.32(a)(6). See TMEP §§806.02 et seq. regarding multi-basis applications.
If a foreign registration in a single class includes a broad statement of the identification of goods or services and the Office determines that the goods or services identified are in more than one class, the applicant may rely on the same foreign registration to cover the additional classes in the United States application, provided the identification in the foreign registration encompasses all goods or services identified in the United States application. See TMEP §§1403 et seq. regarding multiple class applications.
1402.01(c) Identification of Goods and Services in a §66(a) Application
The examining attorney will examine the identification of goods/services in a §66(a) application according to the same standards of specificity used in examining applications under §1 and §44 of the Trademark Act, 15 U.S.C. §§1051 and 1126. That is, the examining attorney must follow the procedures set forth in the TMEP §and identify the goods/services in accordance with the Manual of Acceptable Identification of Goods and Services whenever possible.
However, the international classification of goods/services in a §66(a) application cannot be changed from the classification given to the goods/services by the IB. See TMEP §1401.03(d). If the IB's classification of goods/services in the §66(a) application is different from the classification set forth in the Manual of Acceptable Identification of Goods and Services , the examining attorney will not request an amendment of the classification. The goods/services cannot be moved to another class identified in the application. See TMEP §1904.02(b).
1402.01(d) Location of "Identification of Goods and Services"
If the applicant submits a separate drawing page, this page is considered part of the written application and not a separate element. Any goods or services listed on the drawing will be considered part of the "identification of goods and services," even if these goods or services do not appear within the body of the application.
1402.01(e) Responsibilities of Examining Attorney as to Identification
It is the applicant's duty and prerogative to identify the goods and services. However, the examining attorney may require amendment of the identification of goods or services to ensure that it is clear and accurate and conforms to the requirements of the statute and rules. The examining attorney should explain clearly but concisely the reason for requiring an amendment.
Under 37 C.F.R. 2.61(b), the examining attorney may require information and exhibits if necessary to ascertain the nature of the goods or services or otherwise permit proper examination. See TMEP §814.
When requiring amendment to the identification of goods and services, the examining attorney should advise the applicant that goods or services deleted by amendment may not be reinserted at a later point in prosecution. See TMEP §§1402.06(a) and 1402.07(e). Examining attorneys should take particular care to ensure that pro se applicants are aware of the restrictions on amendments to the identification of goods and services.
If an examining attorney is uncertain as to the acceptability of the language in an identification, he or she should consult with a senior or managing attorney. If still unresolved, questions about an identification of goods or services should be referred to the Administrator for Trademark Identifications, Classification and Practice.
The examining attorney has the discretion to issue a final refusal based on a requirement to amend the identification of goods or services. Examining attorneys should make every effort to resolve these issues, and should suggest an acceptable identification if possible. The appropriate senior or managing attorney must approve final action if the examining attorney does not have full signatory authority. The Administrator for Trademark Identifications, Classification and Practice should be consulted whenever necessary and copies of appeal briefs that involve an issue of identification of goods or services should be sent to the Administrator for monitoring purposes.