1104.10(b)(iii) Identification of Goods/Services
The examining attorney must examine the identification of goods/services in an amendment to allege use to ensure that it conforms to the goods/services specified in the application. The applicant may delete, limit, or clarify the goods/services, but may not add to or expand the identification. 37 C.F.R. §2.71(a). The amendment to allege use must specify all the goods/services for which the applicant seeks registration under §1(a), by listing or incorporating by reference the goods/services on or in connection with which the mark is in use in commerce. See 37 C.F.R. §2.76(b)(1)(ii). To incorporate the goods/services by reference, the applicant may state that the mark is in use on “those goods/services identified in the application” or “those goods/services identified in the application except... [followed by an identification of the goods/services to be deleted].”
If goods/services identified in the application are omitted from the amendment to allege use and it is not accompanied by a request to divide, the omitted goods/services must be deleted from the application and the amendment to allege use accepted. However, if an amendment to allege use is submitted for only some of the goods/services and the applicant specifies an intention to retain the goods/services not yet in use, the amendment to allege may not be accepted until a request to divide the goods/services that are not in use is filed. See 37 C.F.R. §2.76(a)(2); TMEP §1104.03(a).
If the amendment to allege use includes an amended identification of goods/services, to determine whether the amended identification is acceptable and within the scope of the previous identification, the amended identification must be examined in relation to the last acceptable identification of record. TMEP §1402.07(d), (e). When the amended goods/services exceed the scope of a previous acceptable identification, the amended goods/services must be refused. If both an amendment to allege use and a response to an outstanding Office action are received and the two filings contain different amendments to the identification of goods/services, this creates an ambiguity that must be clarified by the applicant.
If the applicant lists all the goods/services identified in the application in the section of a pre-printed amendment to allege use paper form designated for the identification of goods/services that are not in use (the effect of which is a representation that the mark was not used in connection with any goods/services), the USPTO will not presume that the applicant has expressed an intention to delete these goods/services, and the examining attorney must inquire as to the discrepancy.