1402.05(a) Goods That Are Components or Ingredients
When a mark is used to identify only a component or ingredient of a product, and not the entire product, the identification should precisely set forth the component or ingredient. In other words, when the specimen or other material in the record clearly indicates that the mark relates only to a distinguishable part, component, or ingredient of a composite or finished product, then the application should identify that component or ingredient as the goods. The identification should leave no doubt that the mark refers only to one part and not to the entire product. Also, the identification should indicate the types of finished products of which the identified components or ingredients form a part, e.g., “liposomes sold as an ingredient in face creams.” See Ex parte The Joseph & Feiss Co., 114 USPQ 463 (Comm’r Pats. 1957); Ex parte Palm Beach Co., 114 USPQ 463 (Comm’r Pats. 1957); Mercantile Stores Co. v. The Joseph & Feiss Co., 112 USPQ 298 (Comm’r Pats. 1957); In re Libbey-Owens-Ford Glass Co., 75 USPQ 202 (Comm’r Pats. 1947).
If the mark does not pertain solely to a component or ingredient rather than the finished or composite product, the identification should not specify the component or ingredient as the goods.
When classifying component or ingredient marks, a distinction should be made between (1) marks that identify products sold as separate ingredients or components and ingredients for use in the manufacture of the finished product, and (2) marks that identify components or ingredients sold as part of the finished product. In the first situation, the goods are classified in the class of the component or ingredient since it has not yet been transformed into the finished product. In the second, the goods are classified in the class of the finished product, since the component or ingredient has now been incorporated into other finished goods. In these situations, the examining attorney should examine the specimen to determine whether it shows use of the mark to identify the separate component or ingredient or the finished product in its entirety.
Example – The identification of goods lists “balsam extracts.” The specimen shows use of the mark on a bottle of shampoo to identify a particular ingredient of the shampoo, while the shampoo itself is identified by a different mark. As the mark for which registration is sought identifies a component ingredient of a finished product and not a separate finished product, the identification must specify that the goods are “balsam extracts sold as a component ingredient of shampoos” and the proper classification is that of “shampoos,” namely, Class 3.
The same rules of language construction for purposes of amendment, as set forth in TMEP §§1402.01 et seq., 1402.06 et seq., and 1402.07 et seq., apply to amendments of identifications to indicate components or ingredients. Thus, whether an identification may be amended will depend on the particular circumstances of each application.
Example - The indefinite term “fabric” may be amended to the definite identification “fabric for use in the manufacture of slacks” but may not be amended to “slacks,” which is beyond the scope of the identification.
See TMEP §1402.05 regarding accuracy of the identification.