T.M.E.P. § 1402.07
Scope of Identification of Goods and Services for Purposes of Amendment

Executive summary:

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1402.07 Scope of Identification of Goods and Services for Purposes of Amendment

1402.07(a) The "Ordinary-Meaning" Test

For the purpose of determining the scope of an identification, the examining attorney should consider the ordinary meaning of the wording apart from the class designation. The class designation (see TMEP §1401.03) , whether inserted by the applicant or the Office, does not limit the scope of permissible amendments. If the applicant designates the class, this information may be weighed with other factors for the benefit of the applicant in determining the scope of permissible amendments.

However, if the applicant does not merely designate the class but expressly limits the goods or services recited to those that are within one or more classes, the applicant may not amend to specify items not in those classes.

1402.07(b) Ambiguous Identifications

An applicant may amend an ambiguous identification of goods or services (i.e., an identification that fails to indicate a type of goods or services) in order to specify definite goods or services within the scope of the indefinite terminology.

Example - If the applicant specifies "computer systems," the applicant may amend to specify either goods or services within the scope of that term, such as "custom design of computer programs," "computers" or "computer programs for . . . [indicating specific purpose or function]."

Example - "Food" is indefinite, but may be amended to "fresh fruit" (Class 31), or "processed fruit" (Class 29), or "dog food" (Class 31). However, "food" may not be amended to "whiskey" (Class 33).

Example - "Metallic parts" is indefinite, but may be amended to "metal thread fasteners" (Class 6), or "metal drive gears for machines" (Class 7). However, "metallic parts" may not be amended to "automobile chassis" (Class 12).

Likewise, if the applicant includes wording in an indefinite identification of goods or services that, in context, is obviously surplus, the applicant may amend the identification to specify goods or services within the scope of the indefinite terminology. In many cases, the surplus wording will not restrict the range of permissible amendments.

Example - If the applicant begins an indefinite identification of goods with surplus wording such as "sale of . . .," "publishing of . . .," "advertising of . . .," "manufacture of . . .," or similar wording, the applicant may amend to specify either goods or services within the scope of the existing identification. However, the specific terms used to preface the goods do establish some limitation as to scope. "Sale of" may justify an amendment to retail or mail order services for specific goods, but not to custom manufacturing or advertising agency services related to those goods.

The policy permitting applicants to amend to specify either goods or services should be construed narrowly. The applicant should only be permitted to amend from goods to services, or vice versa, when the existing identification of goods and services fails to specify a definite type of goods or services and when the existing identification provides reasonable notice to third parties that the applicant may be providing either goods or services within the scope of the existing identification.

1402.07(c) Unambiguous Identifications

An applicant may amend an unambiguous identification of goods that indicates a specific type of goods to specify definite and acceptable identifications of goods within the scope of the existing terminology.

An applicant may amend an unambiguous identification of services that indicates a specific type of service to specify definite and acceptable identifications of services within the scope of the existing terminology.

An applicant may not amend a definite identification of goods to specify services, or vice versa.

Example - If the applicant specifies "computer programs in the field of accounting," the applicant may only amend to specify computer programs within the scope specified, those concerning accounting. The applicant may not amend to any service, or to any goods outside the scope of those already identified.

Example - Likewise, if the applicant identifies the goods as "computer programs" without specifying the field, the applicant is limited to specific types of computer programs for the purposes of amendment. The applicant has identified a definite type of goods, but Office policy requires further specificity as to purpose or function. An applicant who had identified its goods as "clothing" would likewise be limited to goods within the scope of the term "clothing."

Example - If the applicant specified "retail store services," the applicant would be limited to amendments within the scope of this service. Although Office policy requires further specificity as to field, the applicant has identified a definite type of service.

Example - If the applicant identifies its goods as "stationery" or "wine labels" or "menus," the applicant is restricted, in any amendments, to goods within the scope of the type indicated. The applicant could not amend to specify other types of goods or services, such as "wine" or "restaurant services."

1402.07(d) Permissible Scope of Identification Not Affected by Proposed Amendment That Is Unacceptable

If the applicant proposes an amendment to the identification of goods and services, and the examining attorney determines that the amendment is unacceptable, the examining attorney should refer to the identification of goods before the proposed amendment to determine whether any later amendment is within the scope of the identification. In such a case, the applicant is not bound by the scope of the language in the proposed amendment but, rather, by the language of the identification before the proposed amendment.

If the applicant submits an amendment to the identification of goods and services and the examining attorney determines that it is unacceptable, in whole or in part, the examining attorney should advise the applicant of the item or items that are unacceptable. The examining attorney should also advise the applicant that the previous items listed in the existing identification (not the unacceptable substitute) remain operative for purposes of future amendment.

If the applicant submitted the amendment in response to a requirement, the examining attorney should issue a final requirement for amendment of the identification if the proposed amendment raises no new issues and the application is otherwise in condition for a final action. See TMEP §714.05(a)(ii).

1402.07(e) Permissible Scope of Identification Affected by Proposed Amendment That Is Accepted

Once an applicant amends the identification of goods or services in a manner that is acceptable to the examining attorney, the amendment replaces all previous identifications, and thus restricts the scope of goods/services to that of the amended language. Further amendments that would add to or expand the scope of the recited goods or services, as amended, will not be permitted. In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); In re M.V Et Associes, 21 USPQ2d 1628 (Comm'r Pats. 1991). The applicant may not amend the identification to reinsert goods or services that were omitted or deleted from the identification of goods or services, except in the following limited circumstances:

(1) Where, before publication or within six months of the mailing of an examiner's amendment (see TMEP §§707 et seq.), whichever is earlier, the applicant objects to an amendment of the identification of goods or services in the examiner's amendment on the ground that the examiner's amendment does not reflect the agreement between the applicant and the examining attorney;

(2) Where the applicant inadvertently omits goods or services from an amendment to allege use and has not specifically indicated an intention to delete those goods or services (see TMEP §1104.09(c)) ; or

(3) Where the applicant inadvertently omits goods or services from a statement of use and has not specifically indicated an intention to delete those goods or services (see TMEP §1109.13).

In contrast to situations (2) and (3), set out above, if, in a request for an extension of time to file a statement of use, the applicant inadvertently omits particular goods or services when specifying the goods and services on or in connection with which it has a continued bona fide intention to use the mark in commerce, those items may not later be reinserted. 37 C.F.R. 2.89(f); TMEP §1108.02(d).