1402.01(c) Identification and Classification of Goods and Services in a §66(a) Application
The identification of goods and services in an application based on §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), must comply with the same standards that govern applications under §1 or §44. The applicant must identify the goods and services specifically to provide public notice and to enable the USPTO to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).
The examining attorney will examine the identification of goods and/or services in a §66(a) application according to the same standards of specificity used in examining applications under §1 and §44 of the Trademark Act, 15 U.S.C. §§1051 and 1126. That is, the examining attorney must follow the procedures set forth in the TMEP and identify the goods and/or services in accordance with the principles set forth in the ID Manual guidance in effect on the filing date of the request for extension of protection. See TMEP §1904.01(b) concerning the filing date of a request for extension of protection of an international registration to the United States. See also TMEP §§1401.10(a), TMEP §1904.02(c)–1904.02(c)(v). Thus, although international registrations often include broad statements identifying the goods and services, and in many cases use the entire class heading of a given class, these broad identifications are generally unacceptable in United States applications. The identification of goods and/or services in the request for extension of protection to the United States must be definite and specific even if the international registration includes an overly broad identification. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (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).
When the original identification of goods and/or services in a §66(a) application is definite, but misclassified under United States standards, the examining attorney must accept the identification.
The international classification of goods and/or services in a §66(a) application may not be changed from the classification assigned by the IB. If the IB’s classification of goods or services in the §66(a) application is different from the classification set forth in the ID Manual, the examining attorney will not request an amendment of the classification. In addition, the goods or services may not be moved to another class identified in the application. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). The examining attorney should notify the Office of the Administrator for Trademark Classification Policy and Practice of the particular definite, misclassified goods or services.
When a proposed amendment to the identification is definite, but describes goods and/or services in a class other than the original class assigned by the IB, the examining attorney will not accept it because the amended identification is outside the scope of the original goods and/or services. Because the international registration is limited to the class(es) assigned by the IB, any amendments to the identification of goods/services may only include goods or services that are properly within the scope of the class(es) set out in the §66(a) application. The inclusion of any goods and/or services outside of the scope of the IB-assigned class(es) in a §66(a) application would result in the lack of a basis for registration of such goods/services under U.S. law. See also TMEP §§1904.02(c) et seq. regarding the examination of the identification of goods and services in a §66(a) application.