TMEP 1904.02(c)(ii): Indefinite Identification of Goods/Services with Acceptable Options Within the Scope of the Class

October 2017 Edition of the TMEP

Previous: §1904.02(c)(i) | Next: §1904.02(c)(iii)

1904.02(c)(ii)    Indefinite Identification of Goods/Services with Acceptable Options Within the Scope of the Class

When the identification of goods/services is unacceptable as indefinite, and more specific language that identifies goods/services in the class can be suggested, the examining attorney must require amendment of the wording and advise the applicant that any proposed amendment must be within the scope of the class of the international registration.  The examining attorney should suggest acceptable identification(s) within the class.  Any proposed amendment must also be within the scope of the wording of the identification as originally indicated (37 C.F.R. §2.71(a) ).

Examples:

  • The goods are identified as "headgear" in Class 25. A requirement for greater specificity is issued, offering suggestions for more narrowly identified goods in Class 25, such as "headgear, namely hats, beanies, bathing caps."  The examining attorney should not suggest items within the scope of "headgear" that are not in Class 25, such as "helmets" in Class 9 or "headgear for orthodontic appliances" in Class 10.  The Office action must include an advisory that only goods within the scope of the IB-assigned class will be accepted.
  • The services are identified as "consultation services" in Class 36. A requirement for more specificity is issued, offering suggestions for more narrowly recited services in Class 36, such as "banking consultation," "credit consultation," or "financial consultation."  The Office action must include an advisory that only services within the scope of the IB-assigned class will be accepted.
  • The goods are identified as "video games" in Class 28. The examining attorney may suggest that the applicant adopt "hand held unit for playing video games," "stand alone video game machines," or "video game machines for use with televisions" in Class 28. A proposed amendment including goods in the nature of "video game software," or "video game cartridges" (both of which are Class 9 items under the current edition of the Nice Agreement) would be outside of the scope of the goods covered by the international registration, and such an amendment must be refused.  The Office action must include an advisory that amendments may only include goods within the scope of the class assigned by the IB.