TMEP 1402.03(a): Inclusive Terminology

This is the October 2015 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, drills in Class 7; needle point kits consisting of needles, thread, and patterns in Class 26; or projectors, particularly projectors for the entertainment industry in Class 9).

In limited situations for closely related goods, certain indefinite terms may be used in explanatory phrases that follow a definite term -- for example, “fabric suitable for making coats, suits, and the like.” See Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953).

“Parts therefor,” as related to machinery, is acceptable when it follows a definite identification. “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 primary goods and would all be classified in the same class as the primary goods.