1402.01(e) Responsibilities of Examining Attorney as to Identification
It is the applicant’s duty and prerogative to identify the goods and services. However, the examining attorney may require amendment of the identification of goods and/or services to ensure that it is clear and accurate and conforms to the requirements of the statute and rules. The examining attorney should explain clearly and concisely the reason for requiring an amendment.
Under 37 C.F.R. §2.61(b), the examining attorney may require information and evidence, if necessary, to ascertain the nature of the goods and/or services or otherwise permit proper examination of the application. See TMEP §814.
When requiring amendment to the identification, the examining attorney should advise the applicant that goods or services deleted by amendment may not be reinserted at a later point in prosecution. See TMEP §§1402.06(a), 1402.07(e). Examining attorneys should take particular care to ensure that pro se applicants are aware of the restrictions on amendments to the identification of goods and services.
To determine proper classification and the acceptability of the language in an identification of goods and/or services, the examining attorney should review this chapter of the TMEP, the ID Manual, and any other resources provided by the USPTO relating to the principles of classification under the Nice Agreement and USPTO practices with regard to specificity of goods and services. After consulting these resources, if the examining attorney is uncertain as to the proper classification or acceptability of language in an identification, he or she should consult with a senior or managing attorney. If the issue still remains unresolved, questions about policy and practice regarding the goods or services at issue may be referred to the Office of the Administrator for Trademark Classification Policy and Practice.
The examining attorney has the discretion to issue a final refusal based on a requirement to amend the identification of goods and/or services. Examining attorneys should make every effort to resolve these issues during examination, and should suggest an acceptable identification, if possible. The Office of the Administrator for Trademark Classification Policy and Practice should be consulted, whenever necessary, to resolve identification and classification issues that are the subjects of appeals, including applications remanded for review of requests for reconsideration after the filing of an appeal. Copies of appeal briefs that involve such issues should be sent to the Office of the Administrator for monitoring purposes.