TMEP 1202.08(e): Identification of Goods/Services

This is the October 2015 Edition of the TMEP

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1202.08(e)    Identification of Goods/Services

Identification Need Not Reflect Use on a Series. The identification of goods/services need not reflect that the applicant is using the title on a series of works (either written or recorded). It is sufficient that the record contains the evidence of a series.

Creative Works in a List of Goods or Services. A refusal of registration on the ground that the mark merely identifies the title of a single creative work can be made regardless of whether the creative work is the sole item in the identification of goods/services or is listed with other items. If the record contains information, or if the examining attorney learns from another source, that the mark identifies the title of a single creative work, the examining attorney must issue a partial refusal as to the relevant goods/services. A partial refusal is a refusal that applies only to certain goods/services, or to certain classes. See TMEP §718.02(a).

Example: An application for “newspapers, books in the field of finance, pencils, and coloring books” would be partially refused if the examining attorney determined, either from the application or from another source, that the mark identified the title of the “books in the field of finance.” The use of the same mark on other non-creative matter such as the pencils and coloring books does not overcome the refusal.