TMEP 1402.07(b): Ambiguous Identifications

This is the October 2015 Edition of the TMEP

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1402.07(b)    Ambiguous Identifications

An applicant may amend an ambiguous identification of goods or services (i.e., an identification that fails to indicate a type of goods or services) in order to specify definite goods or services within the scope of the indefinite terminology.

Example - “Food” is indefinite, and may be amended to “fresh fruit” (Class 31), or “processed fruit” (Class 29), or “dog food” (Class 31). However, “food” may not be amended to “whiskey” (Class 33).

Example - “Metallic parts” is indefinite, and may be amended to “metal thread fasteners” (Class 6), or “metal drive gears for machines” (Class 7). However, “metallic parts” may not be amended to “metal chairs” (Class 20).

Likewise, if the applicant includes wording in an indefinite identification of goods or services that, in context, is obviously superfluous, the applicant may amend the identification to specify goods or services within the scope of the indefinite terminology. In many cases, the superfluous wording will not restrict the range of permissible amendments.

Example - If the applicant begins an indefinite identification of goods with superfluous wording such as “sale of...,” “production of...,” “making of...,” “manufacture of...,” (as long as it does not include the wording “custom” or “to the order and specification of others”), or similar wording, the applicant may amend to specify either goods or services within the scope of the existing identification. However, the specific terms used to preface the goods do establish some limitation as to scope. “Sale of” may justify an amendment to retail or mail order services for specific goods, or to the goods themselves, but not to custom manufacturing or advertising agency services related to those goods.

The policy permitting applicants to amend to specify either goods or services should be construed narrowly. The applicant should only be permitted to amend from goods to services, or vice versa, when the existing identification of goods and services fails to specify a definite type of goods or services and when the existing identification provides reasonable notice to third parties that the applicant may be providing either goods or services within the scope of the existing identification.