1402.13 Requirement for Amendment of Portion of Identification of Goods/Services
If a requirement for an amendment of the identification of goods and/or services is expressly limited to only certain goods/services, and the applicant fails to file a response to the refusal or requirement, the application shall be abandoned only as to those particular goods/services, if it is otherwise in condition for approval for publication. 37 C.F.R. §2.65(a)(1); TMEP §718.02(a). However, if the Office action includes an advisory stating that amendment would require the payment of additional fees because the fee paid is insufficient to cover all the classes, and the applicant fails to file a response, the entire application will be abandoned. TMEP §718.02(a).
Accordingly, when the identification of goods/services includes some terminology that is indefinite and some terminology that is acceptable, the examining attorney should specify which terminology is indefinite, suggest amended language if possible, and indicate that the rest of the identification is acceptable. If the examining attorney has not expressly limited the requirement to the particular indefinite wording, and it is appropriate to do so (see TMEP §718.02(a)), the applicant may request in a request for reconsideration, filed after a final Office action or with a notice of appeal, that the requirement be limited accordingly.
When an applicant fails to respond to a requirement to amend some terminology in an otherwise acceptable identification of goods/services, and the application is otherwise in condition for approval for publication, the examining attorney should issue an examiner’s amendment that clearly sets forth the changes that will be made to the identification of goods/services. No prior authorization from the applicant is needed to issue an examiner’s amendment in this situation. See TMEP §707.02 regarding examiner’s amendments without prior authorization by the applicant.