TMEP 1402.03(a): Inclusive Terminology

October 2017 Edition of the TMEP

Previous: §1402.03 | Next: §1402.03(b)

1402.03(a)    Inclusive Terminology

The identification should state common names for goods or services, be as complete and specific as possible, and avoid indefinite words and phrases.  The terms "including," "comprising," "such as," "and the like," "and similar goods," "products," "concepts," "like services" and other indefinite terms and phrases are almost always unacceptable.

The terms "namely," "consisting of," "particularly," and "in particular" are definite and are preferred to set forth an identification that requires greater particularity.  The examining attorney will require that vague terminology be replaced by these terms (e.g., power tools, namely, hammer drills in Class 7; needlepoint kits consisting of needles, thread, and printed patterns in Class 26; or projectors, particularly projectors for the entertainment industry in Class 9). The goods or services listed after "namely," "particularly," or the like must further define the introductory wording that precedes "namely," "particularly," or the like using definite terms within the scope of the introductory wording. For example, "clothing, footwear, and headwear, namely, t-shirts" is indefinite because the wording after "namely" does not include a more specific type of headwear. It is also not clear whether the goods are solely comprised of t-shirts or consist of t-shirts, footwear, and headwear. For clarity, the applicant should separate "footwear" and "headwear" from the "namely" clause using semi-colons, e.g., clothing, namely, t-shirts; footwear; headwear."

In limited situations for closely related goods, certain indefinite terms may be used in explanatory phrases that follow a definite term -- for example, "paint for model airplanes, model cars, and the like." See Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953).

While the term "parts" alone is generally indefinite, the wording "replacement parts therefor" or "structural parts therefor" is acceptable when such wording follows a definite identification. "Parts therefor," as related to machinery, is acceptable when it follows a definite identification for machines in Class 7.

"Accessories therefor" is usually considered indefinite, but it has been allowed in some cases, particularly in the toy field.  Identifications such as "dolls and accessories therefor" and "toy vehicles and accessories therefor" are acceptable because all goods that fall within that broad designation would be classified in Class 28 with the dolls or toy vehicles and could be the basis for a refusal of registration under 15 U.S.C. §1052(d).  However, this phrase should only be used in a situation where it is clear that the goods encompassed by the phrase relate closely to the acceptably identified primary goods and would all be classified in the same class as the primary goods.