TMEP 1904.02(c): Examination of Identification of Goods/Services in §66(a) Applications

October 2017 Edition of the TMEP

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1904.02(c)    Examination of Identification of Goods/Services in §66(a) Applications

Although the IB determines the classification of the goods/services, for purposes of identification, the examining attorney will examine the identification of goods/services in a §66(a) application according to the same standards of specificity used in examining applications under §§1 and 44 of the Trademark Act, 15 U.S.C. §§1051, 1126. See 37 C.F.R. §7.25(a).  Specifically, the examining attorney must follow the procedures set forth in the TMEP and identify the goods/services in accordance with the USPTO’s Acceptable Identification of Goods and Services Manual ("USPTO ID Manual") whenever possible.  However, with respect to requests for extension of protection to the U.S., the assigned classes define the scope of the goods/services for the purpose of determining the extent to which the identification may be amended in accordance with 37 C.F.R. §2.71.

When the IB is unable to determine if the classification assigned to particular goods/services by an applicant’s Office of origin is correct, the IB will request clarification. If no clarification is provided, the IB will include the unclear wording from the international application in the international registration and will indicate, in parentheses, that the wording is "considered too vague for classification," "incomprehensible," or "linguistically incorrect." Although included in the listing of goods/services of the request for extension of protection, the parenthetical language is not part of the scope of the identification and must not be part of any application that is eventually approved for publication.

The language inside the parentheses should not be examined, but the goods/services preceding the parenthetical language should be examined and an acceptable amendment required that is definite and within the scope of the class assigned by the IB. For example, the §66(a) application identified the goods as "Accessories for domestic animals (in the opinion of the International Bureau, the terms are too vague for the purposes of classification - see Rule 13(2)(b) of the Common Regulations)," in Class 21. The wording "accessories for domestic animals" should be examined and an acceptable amendment within Class 21 suggested, such as "accessories for domestic animals, namely, bowls, trays, sponges, brushes, and cages." The parenthetical wording "(in the opinion of the International Bureau, the terms are too vague for the purposes of classification - see Rule 13(2)(b) of the Common Regulations)" and the parentheses must not be part of any suggested amendment and must not appear in the final identification of goods/services.

If the wording preceding the parenthetical language is definite according to USPTO practice, the identification should be accepted. The parenthetical language "(in the opinion of the International Bureau, the terms are too vague for the purposes of classification - see Rule 13(2)(b) of the Common Regulations)" and the parentheses must be removed and must not appear in the final identification of goods/services. If it is otherwise necessary to issue an Office action, the action must include notice that the parenthetical language and the parentheses will be removed from the identification. If it is otherwise unnecessary to issue an Office action, a no-call examiner’s amendment must be issued to document the removal of the wording. A no-call examiner’s amendment is acceptable in this situation because the parenthetical language is provided to the USPTO for informational purposes only and documentation of the removal is for purposes of notice to the applicant only and does not "amend" the application.

If the initial identification of goods/services in the §66(a) application is definite, but misclassified under U.S. standards, the examining attorney must accept the identification, and cannot change the classification. If the initial identification of goods/services is not definite, the classification cannot be changed and the scope of the identification for purposes of permissible amendment is limited by the IB-assigned classification. See TMEP §§1401.03(d), 1402.01(c), 1402.07(a).  Because the international registration is limited to those classes assigned by the IB, the identification includes only those products or services falling within the identified classes.  To propose an amendment outside of the scope of the classes would result in the lack of a basis for registration of such goods/services under U.S. law.

If a §66(a) applicant wants to seek registration for goods, services, or class(es) which are included in the international registration but were not originally included in the request for extension of protection to the United States, the §66(a) applicant must file a subsequent designation with the IB.  Article 3 ter(2); Guide to International Registration, B.II.32.03.  To seek registration for good/services not within the scope of the international registration, the applicant may file a separate application for the same mark under §1 and/or §44.

The identification of goods/services must be specific, definite, clear, accurate, and concise.  See TMEP §1402.01 and cases cited therein.  The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods or services covered by the mark. In re Omega SA, 494 F.3d 1363, 83 USPQ2d 1541 (Fed. Cir. 2007) (noting that the USPTO has discretion to require greater particularity than an entry in WIPO’s Alphabetical List of Goods and Services). Even if the IB characterizes terms as "too vague," "incomprehensible," or "linguistically incorrect," the USPTO has discretion to consider them de novo based on established policies regarding specificity within the context of the class assigned.

These examination procedures apply similarly to collective and certification marks. See TMEP §1304.02(c) regarding identifications in collective membership mark applications, TMEP §1304.02(d) regarding classification in §66(a) collective membership applications, TMEP §1306.02(c) regarding identifications in certification mark applications, and TMEP §1306.02(d) regarding classification in §66(a) certification mark applications.

Generally, there are three types of identifications: (1) acceptable identifications of goods/services; (2) indefinite identifications of goods/services with acceptable options within the scope of the class; and (3) indefinite identifications of goods/services that do not include any goods/services in the designated class.