TMEP 1402.07(a): The "Ordinary-Meaning" Test

October 2017 Edition of the TMEP

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1402.07(a)    The "Ordinary-Meaning" Test

In applications under §1 or §44, for the purpose of determining the scope of an identification, the examining attorney should consider the ordinary meaning of the wording apart from the class number designation.  The class number ( see TMEP §§1401.03 et seq.), whether inserted by the applicant or the USPTO, does not limit the scope of permissible amendments. 37 C.F.R. §2.85(f).  If the applicant designates the class by number, this information may be weighed with other factors for the benefit of the applicant in determining the scope of permissible amendments.

However, if the applicant does not merely designate the class number, but expressly limits the goods or services recited to those that are within one or more classes, the applicant may not amend to specify items not in those classes.

In many cases, the identification is merely a repetition of the entire general class heading for a given class.  However, use of the words comprising a class heading as an identification of goods or services in an application filed with the USPTO or in a request for extension of protection notified under the Madrid Protocol is not deemed to include all the goods or services in the established scope of that class. In re Fiat Grp. Mktg. & Corporate Commc'ns S.p.A., 109 USPQ2d 1593, 1598 (TTAB 2014). In this situation, the USPTO will look to the ordinary meaning of the words for the purposes of determining the scope of the identification.  The USPTO will not permit the applicant to amend to include any item that falls in the class, unless the item falls within the ordinary meaning of the words in the heading. See Id. at 1597 (finding that the wording from the class heading, "business management services," refers to services that are significantly different from and do not include "retail store services"). As noted in TMEP §1402.01(b), class headings are generally unacceptable to identify goods/services in United States applications, even if the class heading is used as the identification in the foreign registration.

In §66(a) applications, the classification assigned by the IB cannot be changed, so the scope of the identification for purposes of permissible amendments islimited by the class. 37 C.F.R. §2.85(f). See TMEP §§1401.03(d), 1402.01(c), and 1904.02(c). For example, if an identification in a §66(a) application is the entire class heading for a particular class, the applicant must replace any indefinite wording with goods or services within the ordinary meaning of the indefinite wording in the heading and may not amend the identification to include goods or services in other classes.