1402.07(e) Permissible Scope of Identification Affected by Proposed Amendment That Is Acceptable
Once an applicant amends the identification of goods and/or services in a manner that is acceptable to the examining attorney, the amendment replaces all previous identifications and restricts the scope of the goods and/or services to that of the amended language. Further amendments that would add to or expand the scope of the recited goods or services, as amended, will not be permitted. 37 C.F.R. §2.71(a); In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); In re M.V Et Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991). This includes amendments to the identification submitted in an amendment to allege use, a statement of use, or a request for an extension of time to file a statement of use.See 37 C.F.R. §§2.71(a), 2.88(b)(1)(iv), 2.89(f). See TMEP §1104.10(b)(iii) regarding submission of a response to Office action and amendment to allege use that contain different amendments to the identification of goods and/or services, TMEP §1108.02(d) regarding identifying the goods and/or services in a request for an extension of time to file a statement of use, and TMEP §1109.13 regarding identifying the goods and/or services in a statement of use.
The only circumstance in which the applicant may reinsert goods or services that were omitted or deleted from the identification of goods or services is when before publication or within six months of the issuance of an examiner’s amendment (see TMEP §§707-707.03), whichever is earlier, the applicant objects to an amendment of the identification of goods and/or services in the examiner’s amendment on the ground that the examiner’s amendment does not reflect the agreement between the applicant and the examining attorney.