T.M.E.P. § 1402.05
Accuracy of Identification

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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1402.05 Accuracy of Identification

An identification is unacceptable if it is inconsistent with the goods or services indicated by the specimens, or if the ordinary meaning of the identification language is at variance with the goods or services evidenced by the specimens or any other part of the record. For example, the term "posters" would be an unacceptable identification when specimens show use of the mark for "decalcomanias."

The examining attorney may require an amendment of the identification language to accurately describe the goods or services. In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff'g 204 USPQ 261 (TTAB 1979) (examining attorney has discretion to require applicant to state whether goods are packaged in container to which mark refers); Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 236 F.2d 423, 111 USPQ 105 (C.C.P.A. 1956) (requirement to amend "internal combustion engines for industrial use" to "outboard motors" considered proper); In re Opryland USA Inc., 1 USPQ2d 1409, 1410 (TTAB 1986) (noting that specimens showed use of the mark for "television broadcasting services" and/or "cable television transmission services" rather than "television production services"); In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976) (acceptance of identification of goods as "catalysts," which could include large number of catalysts that applicant does not manufacture, would give applicant a scope of protection to which it was not entitled); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505, 509 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974) (noting that, in view of specimens, greater specificity should have been required in identifying registrant's detergent product); In re Toro Mfg. Corp., 174 USPQ 241 (TTAB 1972) (noting that use on "grass-catcher bags for lawn-mowers" did not justify the broad identification "bags," which would encompass goods diverse from and commercially unrelated to applicant's specialized article); Ex parte Consulting Engineer Publishing Co., 115 USPQ 240 (Comm'r Pats. 1957) (amendment of "periodical" to "monthly news bulletin" required); Merchandising Promotions v. Hastings & Co., Inc., 110 USPQ 256 (Comm'r Pats. 1956) (amendment of "gold stamping foil" to "cellophane folders with pressure-sensitive gold foil strip attached for personalizing articles" required).

An identification cannot be amended to accurately describe the goods if the amendment would add to or expand the scope of the identification. See 37 C.F.R. 2.71(a); TMEP §§1402.06 and 1402.07 et seq.

1402.05(a) Goods That Are Components or Ingredients

When a mark is used to identify only a component or ingredient of a product, and not the entire product, the identification should precisely set forth the component or ingredient. In other words, when the specimen or other material in the record clearly indicates that the mark relates only to a distinguishable part, component or ingredient of a composite or finished product, then the application should identify that component or ingredient as the goods. The identification should leave no doubt that the mark refers only to one part and not to the entire product. Also, the identification should indicate the types of finished products of which the identified components or ingredients form a part, e.g., "liposomes for use as an ingredient in face creams." See Ex parte Joseph & Feiss Co., 114 USPQ 463 (Comm'r Pats. 1957); Ex parte Palm Beach Co., 114 USPQ 463 (Comm'r Pats. 1957); Mercantile Stores Co. v. Joseph & Feiss Co., 112 USPQ 298 (Comm'r Pats. 1957); In re Libbey-Owens-Ford Glass Co., 75 USPQ 202 (Comm'r Pats. 1947).

If the mark does not pertain solely to a component or ingredient rather than the finished or composite product, the identification should not specify the component or ingredient as the goods.

The same rules of language construction for purposes of amendment, as set forth in TMEP §§1402.01 , 1402.06 and 1402.07 et seq., apply to amendments of identifications to indicate components or ingredients. Thus, whether an identification may be amended in order to identify a component or ingredient will depend on the particular circumstances of each application.

Example - The indefinite term "fabric" may be amended to the definite identification "fabric for use in the manufacture of slacks" but may not be amended to "slacks," which is beyond the scope of the identification.

When classifying component or ingredient marks, a distinction should be made between marks that identify these products sold as separate ingredients or components and used to make the finished product, and marks that identify components or ingredients sold as part of the finished product. In the first situation, the goods are classified in the class of the component or ingredient since it has not yet been transformed into the finished product. In the second, the goods are classified in the class of the finished product since the component or ingredient has now been incorporated into other goods. In this situation, the examining attorney should make sure that the specimen shows use of the mark to identify the component or ingredient and not to identify the finished product in its entirety.

1402.05(b) Material Composition

If an identification of goods is specific, but the goods could be classified in more than one class depending on the material composition, then the material composition must be indicated in the identification of the goods.

Example - "Statues" refers to specific items; however, the classification depends on the material composition. "Statues of non-precious metal" are classified in Class 6; "statues of precious metal" are classified in Class 14; "statues of wax, wood, plaster or plastic" are classified in Class 20; and "statues of glass or porcelain" are classified in Class 21.

However, in certain situations, because of the nature of the particular industry and the knowledge that the items are made out of different materials and are classified accordingly, an indication of the material composition in the identification may be unnecessary. See TMEP §1401.06(a) and 1402.03 for further explanation.