TMEP 1402.06(b): Clarifying the Identification of Goods and Services

October 2017 Edition of the TMEP

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1402.06(b)    Clarifying the Identification of Goods and Services

Under 37 C.F.R. §2.71(a), an applicant may amend "to clarify" the identification of goods and/or services.  The applicant may clarify an identification that is indefinite or overly broad to identify goods and/or services that are within the scope of the goods and services in the identification.  As noted in TMEP §1402.06, filing an application for registration on the Principal Register establishes a constructive date of first use in commerce, contingent on issuance of the registration. 15 U.S.C. §1057(c).  Accordingly, the applicant may not expand those rights through an amendment that broadens the identification of goods and/or services.

Thus, the applicant may amend from the more general to the specific, but the applicant may not amend from the specific to the more general.  The scope of the goods/services identified initially, or as acceptably limited by an express amendment, establishes the outer limit for permissible amendments. See TMEP §§1402.07; In re Jimmy Moore LLC, 119 USPQ2d 1764 (TTAB 2016).

In an application under §1 or §44 of the Trademark Act, classification may provide some guidance in determining whether an amendment exceeds the scope of the goods/services identified initially, but it is not controlling.  In an application under §1 or §44, the examining attorney may suggest and accept amendments to the identification that result in a change of class, if the amended identification does not exceed the scope of the original identification.

Example - If an applicant has erroneously identified its goods and services as "menus" but, in fact, the applicant intends to register the mark for restaurant services, the applicant may not amend the identification to "restaurant services."  In such a case, the original identification, which is specific and narrow in scope, may not be expanded to services beyond the scope of that identification.

Example - If an applicant has erroneously identified its goods and services as "bottles for salad dressing" but, in fact, the applicant intends to register the mark for salad dressing, the applicant may not amend the identification to "salad dressing."  However, if an applicant identifies its goods and services as "bottles of salad dressing," the applicant may amend the identification to "salad dressing."  As above, where the original language is specific and narrow in scope, the identification may not be expanded to goods beyond that scope.

Example - If an applicant has erroneously identified its goods and services either as "packaging and labels" or as "packaging and labels for toys" but, in fact, the applicant intends to register the mark for toys, the applicant may not amend to correct the identification, because "toys" is not within the scope of the initial identification.

In a §66(a) application, classification is assigned by the IB and may not be changed. 37 C.F.R. §2.85(d).  See TMEP §§1401.03(d), 1402.01(c), and 1904.02(b) and (c) regarding §66(a) applications.