TMEP 1402.06(a): Limiting the Identification of Goods and Services

October 2017 Edition of the TMEP

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1402.06(a)    Limiting the Identification of Goods and Services

As noted above, the rules permit amendments to limit the identification of goods and services.

Deletions from the identification of goods and services are also permitted. "Deletion" means the elimination of an existing item in an identification of goods and services in its entirety.  If the applicant wishes to amend the identification of goods and services to delete one or more items, the examining attorney should accept the amendment, if it is timely and otherwise proper.  However, once the applicant has expressly amended the identification of goods and services to delete an item, it may not be reinserted in a later amendment.

If the applicant wishes to amend the identification of goods and services to restrict one or more of the items by inserting qualifying language within the scope of the identification or substituting more specific language, the examining attorney should accept the amendment, if it is timely and otherwise proper.  Qualifying language, however, may not be deleted from an identification.

Example - If the applicant initially identifies the goods as "publications," the applicant may amend to substitute one or more terms that fall under the definition of publications.  Likewise, if an applicant identifies its goods as "pamphlets," the applicant may amend to include "brochures" in Class 16 because these terms are generally equivalent and interchangeable.  In either case, the applicant must specify the subject matter. See TMEP §1402.03(e).

Example - If the applicant initially identifies the goods as "commercial cooking ovens sold to restaurants" in Class 11, the applicant cannot delete the language "sold to restaurants," because this would broaden the identification.

If an applicant wishes to amend the identification of goods and services to insert a good or service that is equivalent to or logically encompassed by a good or service already included in the identification of goods and services, the examining attorney should permit the amendment, if it is timely and otherwise proper.

On the other hand, an applicant may not amend an identification of goods/services to add or substitute a term that is not logically included within the scope, or to add exclusionary language that falls outside the scope, of the terms originally identified or that is otherwise qualitatively different from the goods and services as originally identified.

Example - If the applicant identifies the goods as "computer programs," the applicant may not add or substitute computers or other items of computer hardware to the listing.

Example - If the applicant initially identifies the goods as "hats," the applicant may not add or substitute "scarves." Likewise, the applicant may not add or substitute "shirts" for "slacks."

Example - If the applicant identifies its services as "ophthalmology services," the applicant may not amend the identification to "medical services," because the amendment would expand the identification to include services beyond the scope of those identified initially.

The scope of the goods and services, as originally identified or as acceptably amended by an express amendment, establishes the outer limit for any later amendments. See TMEP §1402.07.

Under 37 C.F.R. §2.71(a), there is no general prohibition against specific types of limitations in identifications of goods and services, such as the use of negatives, exceptions, or similar language.  Limitations on identifications phrased in the negative or as exceptions are acceptable, if they are otherwise proper. However, an identification may not include phrases such as "included in this class" or "not included in other classes." Such wording is not part of the common name of a good or service, and those unfamiliar with the Nice Classification would not understand the limitation. See TMEP §1402.01 for additional information.

Because 37 C.F.R. §2.71(a) precludes additions that broaden the identification, examining attorneys should not require or suggest unduly restrictive identifications. See In re Sentry Chem. Co., 230 USPQ 556 (TTAB 1986).  Once the identification has been limited, it cannot be expanded later. See In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); In re M.V Et Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991).  Also, when requiring amendments to the identification, examining attorneys must advise applicants that additions that broaden the identification are not permitted.