TMEP 1109.13: Identification of Goods/Services in Statement of Use

This is the October 2015 Edition of the TMEP

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1109.13    Identification of Goods/Services in Statement of Use

The statement of use must either list or incorporate by reference the goods/services specified in the notice of allowance on or in connection with which the mark is in use in commerce. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(b)(1)(ii). The goods/services specified in the statement of use must conform to the goods/services identified in the notice of allowance. 37 C.F.R. §2.88(i)(1). To incorporate the goods/services by reference, the applicant may state that the mark is in use on “those goods/services identified in the notice of allowance” or “those goods/services identified in the notice of allowance except... [followed by an identification of the goods/services to be deleted].” If the applicant omits any goods/services that were listed in the notice of allowance, the ITU/Divisional Unit will delete these goods/services from the application. The applicant may not thereafter reinsert the deleted goods/services. 37 C.F.R. §2.88(i)(2). In this situation, the applicant cannot file a petition under 37 C.F.R. §2.66, claiming unintentional delay in filing a statement of use for the omitted goods/services.

If the applicant fails to identify or incorporate by reference any goods or services, or if the applicant lists all the goods/services in the section of a pre-printed paper form designated for the identification of goods that are not in use, the Office will permit applicant to correct the mistake. The ITU staff will issue a letter noting that no goods or services were specified or incorporated by reference in the statement of use, and granting the applicant thirty days in which to submit a verified statement clarifying the goods/services.