TMEP 1401.10(a): Effective Date of USPTO ID Manual Entries for Applications Filed Under §66(a)

October 2017 Edition of the TMEP

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1401.10(a)    Effective Date of USPTO ID Manual Entries for Applications Filed Under §66(a)

In a §66(a) application, the IB controls the classification of goods and services. See TMEP §1904.02(b). The IB uses the edition of the Nice Agreement in effect at the time international registration is sought to classify the goods and services. See TMEP §1904.02(c)(v). The only instance in which classification in a §66(a) application may be modified is upon the receipt of a correction from the IB. See TMEP §§1904.02(b) and 1904.02(e)(i).

Although the IB determines the classification of the goods/services, the USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods or services covered by the mark. In re Omega SA, 494 F.3d 1363, 1365, 83 USPQ2d 1541, 1543 (Fed. Cir. 2007) (noting that the USPTO has discretion to require greater particularity than an entry in WIPO’s Alphabetical List of Goods and Services). A request for extension of protection of a registration to the United States under §66(a) must comply with USPTO identification policies and practices in effect on the "filing date" of the extension request. See TMEP §1904.01(b) for the distinction between the filing date for a request for extension of protection made in an international registration and the filing date for a request for extension of protection made in a subsequent designation.

Example: "Bath salts [non-medicated]" appeared as an acceptable entry in the ID Manual in Class 3 from April 2, 1991 through December 31, 2016. On January 1, 2017, "Bath salts [non-medicated]" was deleted from the ID Manual because it is broad enough to encompass "bath salts for medical purposes" in Class 5 and "bath salts, not for medical purposes" in Class 3. If the USPTO receives a §66(a) application for "bath salts" in Class 3 with a filing date that is on or after January 1, 2017, the examining attorney must require the applicant to amend the wording "bath salts" to specify a purpose appropriate to Class 3 (e.g., "bath salts, not for medical purposes"), per the ID Manual guidance in effect on the filing date of the request for extension of protection to the United States.

Any proposed amendment to the identification must be within the scope of the goods/services in the class assigned by the IB. See TMEP §1904.02(c)(ii).