TMEP 1402.05: Accuracy of Identification

October 2017 Edition of the TMEP

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1402.05    Accuracy of Identification

An identification is unacceptable if it is inconsistent with the goods or services indicated by the specimens or if the ordinary meaning of the identification language is at variance with the goods or services evidenced by the specimens or any other part of the record.

The examining attorney may require an amendment of the identification language to accurately describe the goods or services. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (affirming decision that the examining attorney properly required amendment of the term "chronographs" in the identification of goods so that proper classification could be determined); In re Faucher Indus. Inc., 107 USPQ2d 1355, 1361 (TTAB 2013) (finding that examining attorney properly questioned the nature of the goods and required that the identification of goods be amended to disclose the material composition of the goods so that proper classification could be determined). Moreover, the examining attorney must require an amendment to the identification language when it includes broad wording that would normally be acceptable, but the specimen(s) shows that the actual goods or services are a specialized type or are used only in a specialized trade channel.  In this situation, the identification would be misleading.  The amended identification should specify the specialized characteristic or specialized trade channel to accurately describe the goods or services. In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1335 (TTAB 2009) (Board stating that "[t]he Office’s requirement that the examining attorney ensure the accuracy of the identification of goods is abundantly clear."); In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff’g 204 USPQ 261 (TTAB 1979) (examining attorney has discretion to require applicant to state whether goods are packaged in container to which mark refers); Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 236 F.2d 423, 111 USPQ 105 (C.C.P.A. 1956) (requirement to restrict identification to "outboard motors" considered proper); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505, 509 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974) (noting that, in view of specimens, greater specificity should have been required in identifying registrant’s detergent product); In re Toro Mfg. Corp., 174 USPQ 241 (TTAB 1972) (noting that use on "grass-catcher bags for lawn-mowers" did not justify the broad identification "bags," which would encompass goods diverse from and commercially unrelated to applicant’s specialized article); Ex parte Consulting Engineer Publishing Co., 115 USPQ 240 (Comm’r Pats. 1957) (amendment of "periodical" to "monthly news bulletin" required).

In Petroglyph Games, 91 USPQ2d at 1336, the Board addressed the question of whether the identification "computer game software" was accurate for the mark BATTLECAM if the mark was being used only for a feature of a computer game.  The Board found that the subsets of computer code identified by the mark, which the specimen indicated supported only particular aspects or features of the computer game, could also be accurately identified as "computer game software," noting that although "there is a market for selling or distributing to computer game players all the software that allows a game to be played in its entirety, there may also be a market for computer game software related to only certain game features, perhaps among game developers or producers who might want to include a particular feature in a complete game, or perhaps among players seeking after-market add-ons or enhancements for existing games."  Therefore, it would not be inaccurate to identify such software simply as "computer game software."

The wording of an identification cannot be amended to accurately describe the goods or services if the amendment would add to or expand the scope of the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07 et seq.

See TMEP §1402.13 regarding requirements to amend a portion of the identification of goods/services.