TMEP 1402.09: Use of Marks or Terms "Applicant" and "Registrant" Inappropriate in Identifications

October 2017 Edition of the TMEP

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1402.09    Use of Marks or Terms "Applicant" and "Registrant" Inappropriate in Identifications

If a mark that is registered to an entity other than the applicant is used in the identification of goods or services, the examining attorney must require that it be deleted and that generic wording be substituted.  It is inappropriate to use a registered mark, or its plural or punctuated/non-punctuated forms, to identify a kind of product or a service, because such a mark indicates origin in only one party and cannot be used to define goods or services that originate in a party other than the registrant. Camloc Fastener Corp. v. Grant, 119 USPQ 264, 265 n.1 (TTAB 1958).  In place of the mark, a generic term must be used.

Generally, an applicant should not use its own registered or unregistered mark in an identification of goods or services in its own application.  If the applicant chooses to do so, however, the applicant should be careful to use the mark as an adjective modifying the generic name of the goods or services.

In addition, the words "applicant" or "registrant" must not appear in the identification of goods or services.  Before registration, use of the term "registrant" is inaccurate, and, after registration, use of the term "applicant" is inaccurate.

If the examining attorney issues a nonfinal action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite but is unacceptable because it includes a registered mark or the terms "applicant" or "registrant" in reference to the party seeking registration of the mark, this is not considered a new issue, and the examining attorney must issue a final requirement for amendment of the identification.  However, if the examining attorney issues a finalaction requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite but includes a registered mark or the terms "applicant" or "registrant," the examining attorney should treat the response as incomplete, and grant the applicant additional time to cure this deficiency, pursuant to 37 C.F.R. §2.65(a)(2).  See TMEP §718.03(b) for further information about granting an applicant additional time to perfect an incomplete response. Examining attorneys are encouraged to try to resolve this issue by examiner’s amendment.