TMEP 1904.02(c)(i): Acceptable Identifications of Goods/Services

October 2017 Edition of the TMEP

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1904.02(c)(i)    Acceptable Identifications of Goods/Services

When the identification of goods/services is definite in accordance with USPTO policies, the identification is acceptable, regardless of the class assigned.  If the goods/services are classified in accordance with the current edition of the Nice Agreement, no further requirements are necessary.

An international registration may encompass goods/services that were classified under an earlier version of the Nice Agreement.  If the IB’s classification of goods/services in the §66(a) application is different from the classification currently set forth in the USPTO ID Manual, the examining attorney will not require amendment of the classification.  However, the examining attorney should notify the Administrator for Trademark Classification Policy and Practice ("Administrator") of the serial number, using the internal TM Madrid ID/Class mailbox.  The goods/services cannot be moved to another class identified in the application. 37 C.F.R. §2.85(d).

With respect to acceptable goods/services that appear to be misclassified, if the examining attorney determines that the class would be proper were the goods/services amended with further clarifying language, the examining attorney may require an amendment for further specificity to limit the identification to goods/services that are in the class indicated in the international registration.

Examples:

  • The goods are identified as "footwear" in Class 25.  The wording is definite and the IB has assigned the correct class.  No action necessary.
  • The services are identified as "legal services," but the IB has assigned Class 42.  The wording is definite, but the class is not consistent with the current edition of the Nice Agreement.  No action is necessary.  The examining attorney should notify the Administrator of the serial number.
  • The goods are identified as "tobacco," but the IB has assigned Class 35.  The Alphabetical List of the Nice Agreement classifies such goods in Class 34.  The examining attorney will accept the goods in the assigned class.  The examining attorney should notify the Administrator of the serial number.
  • The goods are identified as "pasta," but the IB has assigned Class 3. The Alphabetical List of the Nice Agreement classifies such goods in Class 30.  The examining attorney will accept the goods in the assigned class, and notify the Administrator of the serial number.
  • The goods are identified as "nutritional supplements as included in this class," but the IB has assigned Class 29.  Even with the wording added to "nutritional supplements," the identification of goods remains definite, but the class is not consistent with the USPTO Identification and Classification of Goods and Services Manual.  The examining attorney will accept the goods in the assigned class, and notify the Administrator of the serial number.