1402.03 Specificity of Terms Used in Identifying Goods and Services
Applicants frequently use broad terms to identify the goods or services in an application. In applications based solely on §1(a), 15 U.S.C. §1051(a), the applicant must have used the mark in commerce on all of the goods and/or services as of the application filing date. See First Int’l Services Corp. v. Chuckles, Inc., 5 USPQ2d 1628 (TTAB 1987). In applications filed under §1(b), 15 U.S.C. §1051(b), and §44, 15 U.S.C. §1126, the applicant must assert a bona fide intent to use the mark in commerce on or in connection with the specified goods and/or services as of the application filing date. 37 C.F.R. §2.33(b)(2). In an application filed under §66(a), 15 U.S.C. §1141f(a), the verified statement is part of the international registration on file at the IB, and must allege that the applicant/holder has a bona fide intention to use the mark in commerce with the goods/services identified in the international application or subsequent designation. 37 C.F.R. §2.33(e)(1). The requirement for use or a bona fide intent to use is not necessarily violated by broad identifying terms. When a mark is used on a number of items that make up a homogeneous group, a term that identifies the group as a whole would be understood as encompassing products of the same general type that are commercially related.
As long as a broad term identifies the goods or services that are intended to be covered with reasonable certainty, it will be reasonable, from a commercial viewpoint, to consider that the mark has been used for all the related goods or services that fall in the designated group. See In re Dynamit Nobel AG, 169 USPQ 499 (TTAB 1971) (“ammunition” permitted because its scope was assumed to be understood); In re Port Huron Sulphite & Paper Co., 120 USPQ 343 (TTAB 1959) (“paper other than board papers” approved because of evidence of actual use on various types of paper).
Where an applicant has identified its goods or services very broadly but does not use the mark on a substantial number of related goods/services encompassed by the identification language, the USPTO may require further specificity.
The examining attorney must consider the following guidelines:
A term that clearly includes particular items that are
classified in more than one class (e.g., “artists’ materials”) is not acceptable, even
with such additional wording as “included in this class” at the end of the
identification. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed.
Cir. 2007) (“chronographs” held indefinite because it includes both time-recording
devices in Class 9 and watches in Class 14 and because merely classifying the goods in
only one of the classes does not preclude a requirement for further specificity in the
identification). Other examples are “blankets,” which include such diverse and
differently classified types as bed blankets in Class 24, fire blankets in Class 9, and
horse blankets in Class 18; “boxes,” which include set top boxes and junction boxes in
Class 9, music boxes in Class 15, and boxes for holding things, which are classified
according to their material compositions; and “sports equipment,” because the nature of
the equipment will determine the class, i.e., a football helmet would be in Class 9; the
football uniform would be in Class 25, and the football padding equipment in Class 28.
However, the conclusion that a term would clearly include items classified in more than
one class should not be drawn unless reasonable, in light of the evidence of record.
In re Thor Tech, Inc., 85 USPQ2d 1474 (TTAB 2007) (“park trailer”
held to be an acceptable identification, where the applicant’s evidence showed that it
is a term of art generally understood by those in the industry and by consumers as a
designation for a type of recreational vehicle, which unambiguously places it in Class
12; Board was not persuaded by the examining attorney’s argument that the identification
was indefinite because it could also encompass mobile homes in Class 19).
See TMEP §1402.05(b) regarding goods that may be classified in more than one class depending on their material composition.
- (2) Some terminology is sufficient for purposes of according a filing date but too indefinite to enable proper examination (e.g., “metallic parts”). For example, in In re Societe Des Parfums Schiaparelli, S.A., 122 USPQ 349, 350 n.4 (TTAB 1959), clarification of the term “beauty products” was held to be necessary because the term does not have a particular commercial meaning. In such a situation the examining attorney may seek further information under 37 C.F.R. §2.61(b). See TMEP §814.
- (3) In rare instances, an identification may include a term that has multiple, entirely different meanings. If the meaning of such a term can be understood when read in association with the title of the class in which it is placed, and if the term is otherwise satisfactory, the examining attorney need not require amendment to further qualify the term. For example, “mufflers” in the clothing class would not require further modification to indicate that articles of clothing are intended, rather than automotive mufflers. The limited number of items to which this applies, however, represents a narrow exception to the general rule that an identification must itself provide a clear indication of the nature of the goods or services, without reference to the class. See TMEP §§1402.01 and 1402.05(b). The title of a class cannot be used to define the nature of the goods when the same item could be classified in more than one class depending on its function, material composition, or field of use. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (“chronographs” held indefinite because it includes both chronographs that function as time recording devices in Class 9 and chronographs that function as watches in Class 14). For example, tools are classified in Class 7 if they are power driven or Class 8 if they are not power driven. The identification should include wording to assist in determining whether the tools should be classified in Class 7 or 8 (e.g., “powered,” “non-powered,” “hand tools, namely”).
- (4) The common understanding of words or phrases used in an identification determines the scope and nature of the goods or services. A basic and widely available dictionary should be consulted to determine the definition or understanding of a commonly used word.
- (5) Many goods are commonly understood to move in a particular channel of trade or have particular attributes. When those goods are classified in the class that is appropriate for that common understanding, often no further specification as to the nature of those goods is necessary. However, when the goods have a special use or attributes that are not typically associated with those particular goods that would cause it to be classified in a different class, that use or attribute should be indicated in the identification in order to justify the classification. For example, “skin lotion” usually refers to a cosmetic product - one that is not medicated. For that reason, it can be classified in Class 3 without further specification. However, a skin lotion that is medicated should be classified in Class 5, and the identification should indicate that the product is medicated in order to justify its classification in Class 5 rather than in the more commonly understood and assigned Class 3.
With broad identifications, as with any identification that includes more than one item, the amount of proof (normally by way of specimens) necessary to assure the examining attorney that the mark has been used on “all” the items in the application will vary. See TMEP §904.01(a). The USPTO does not require specimens showing use of the mark for every item set forth in an application. However, if an identification is so broad that it encompasses a wide range of products or services, the applicant may be required to submit evidence that it actually uses the mark on a wide range of products or services to obtain registration. 37 C.F.R. §2.61(b). See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976). See TMEP §1402.05 regarding accuracy of the identification.
The examining attorney should consider the degree of commercial relationship between the products. For a closely related group, a specimen showing use of the mark on one item of the group is sufficient. As the closeness of the relationship becomes less certain, specimens of use on more than one item might be necessary to show generalized use. 37 C.F.R. §2.61(b). The nature of the mark may also be considered. “House” marks are placed on all the goods that a company produces, whereas a “product” mark that is appropriate only for a specific commodity is used only on that commodity. See TMEP §1402.03(b) regarding house marks, and TMEP §1402.03(c) regarding identifications that refer to “a full line of” a genre of products.
The appropriateness of any broad identification depends on the facts in the particular case. The examining attorney should permit applicants to adopt terms that are as broad as the circumstances justify.