TMEP 1902.07(c)(ii): Identification (Indication) of Goods/Services

October 2017 Edition of the TMEP

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1902.07(c)(ii)    Identification (Indication) of Goods/Services

If the IB determines that the identification of goods/services, referred to as the "indication of goods/services" by the IB, is too vague or is incomprehensible or linguistically incorrect, it will notify both the applicant and the USPTO.  Common Reg. 13.  The IB may include a suggested amendment in the notification.  The USPTO will not respond to the notice on behalf of applicant or advise the applicant as to how to identify the goods/services.

The applicant cannot send a response directly to the IB.  Any response regarding the identification of goods/services must be sent through the USPTO.  The IB must receive the response within 3 months of the date of the IB notification. 37 C.F.R. §§7.14(a) and 7.14(b); Common Reg. 13(2).  See TMEP §1902.07(f) regarding responses to notices of irregularity submitted through the USPTO.

The applicant’s response to the IB’s notice should separately address each irregularity pertaining to the identification of goods/services, specifying which goods/services are to be deleted or amended, and providing any explanation or arguments deemed necessary. To avoid any misunderstanding by the examiners at the IB, the response should also include a separate final listing of the goods/services as it will appear in the international registration. If the applicant omits any goods/services from the final listing that were previously included in the identification of goods/services, the IB may remove such goods/services from the international registration.

An MPU trademark specialist will review the applicant’s response to ensure that the goods/services identified in the response are within the scope of the identification in the basic application and/or registration at the time the response is filed.  If an amendment to the goods/services in the basic application and/or registration has been entered into the Trademark database since the date the international application was submitted to the USPTO, the goods/services in the response to the IB notice must be within the scope of the amended goods/services.  If the goods/services in the response exceed the scope of the goods/services in the basic application and/or registration as amended, the trademark specialist will notify the applicant that the proposed amendment to the goods/services does not conform to the goods/services as identified in the basic application and/or registration and that the response will not be forwarded to the IB.  If there is time remaining in the IB response period, the applicant may submit a corrected response.  If the goods/services in the corrected response do not exceed the scope of the goods/services in the basic application or registration as amended, and the IB response period has not expired, the MPU will forward the response to the IB.

If no proposal acceptable to the IB for remedying the irregularity is made within 3 months, and all other requirements have been met, the IB will either: (1) include the term in the international registration with an indication that the IB considers the term to be unacceptable, provided that the class of the vague term was specified in the application; or (2) if the class was not specified, delete the term and notify both the USPTO and the applicant accordingly.  Common Reg. 13(2)(b).