TMEP 1904.03(g): Notification of Limitation of the List of Goods/Services with Respect to a Pending Request for Extension of Protection

This is the October 2015 Edition of the TMEP

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1904.03(g)    Notification of Limitation of the List of Goods/Services with Respect to a Pending Request for Extension of Protection

Limitation Due to Partial Cancellation of International Registration

When the USPTO receives notification from the IB that the international registration has been cancelled in part due to the ceasing of effect of the basic registration, the USPTO will partially cancel the pending request for extension of protection by limiting or removing the cancelled goods and/or services from the USPTO’s Trademark database. 15 U.S.C. §1141j(a); 37 C.F.R. §7.30. The MPU trademark specialist will determine what, if any, goods and/or services remain extended to the United States and narrow the listing of goods and/or services accordingly.

Voluntary Limitation by Holder of International Registration

Upon receipt of notification from the IB that a voluntary limitation of the list of goods/services may affect an extension of protection to the United States, the USPTO may declare that the limitation has no effect. Such a declaration must be sent to the IB within 18 months of notification of the limitation. The USPTO will indicate the reasons why the limitation has no effect, the corresponding essential provisions of the law, and whether the declaration is subject to review or appeal. Common Regs. 27(5)(a)-(c).

If the MPU determines that a limitation does have effect in the U.S., the limitation shall be entered into the Trademark database with respect to the goods/services as identified at the time of receipt of the notification of limitation.

If the MPU determines that review by the examining attorney is required, the MPU will notify the examining attorney, and the examining attorney will determine whether the limited goods/services are within the scope of the identification of goods/services as originally identified in the §66(a) application. For example, if the request for extension of protection originally lists goods as “clothing” in International Class 25, and the applicant submits a response to an Office action proposing to amend such goods to “clothing, namely pants, shirts, and dresses,” and the USPTO later receives a voluntary limitation that lists the goods as “clothing for women,” the consideration of scope is against the original identification of “clothing.” If it is determined that the limitation is not an expansion of the scope of the original listing, the limited goods/services will then be considered in light of any interim amendments proposed by the applicant during prosecution of the application. In the example above, the proposed wording “clothing, namely, pants, shirts, and dresses” will be further limited to “clothing for women, namely, pants, shirts, and dresses.”

If the examining attorney determines that the limitation is not acceptable (e.g., because he or she determines that the change requested results in an extension rather than a limitation of the goods/services), he or she must issue an Office action refusing the limitation and indicating the reasons why the limitation is unacceptable. If the listing of goods/services is not an expansion of the original goods/services but is itself indefinite by USPTO standards (e.g., “clothing for women”), the examining attorney must issue a new requirement for a sufficiently definite identification and may supersede any previously issued requirement to the extent it remains outstanding at the time of examination of the limitation. If the examining attorney issues a new Office action relating to the limitation of goods/services, he/she must also notify the MPU, and the MPU will ensure that the IB is notified when a limitation is found to have no effect in the United States. The applicant may argue against the refusal of the limitation, and, if such refusal is made final, file an appeal to the Trademark Trial and Appeal Board or petition to the Director pursuant to 37 C.F.R. §2.63(b)(2).

If an Office action requiring only that the identification be amended is outstanding, it is possible that a limitation notice processed before the end of the response period would resolve the issue. If the examining attorney determines that the identification proposed in the limitation is acceptable and puts the application in condition for approval for publication, the examining attorney may issue a no-call examiner’s amendment that acknowledges receipt of the limitation and states that the requirement for a more definite identification is satisfied and may then approve the application for publication.

If a limitation results in the deletion of all goods/services identified in the §66(a) application, the application will be abandoned.

See also TMEP §1906.01(e) for information about filing requests to record limitations with the IB, and TMEP §1904.15 regarding limitations in the list of goods/services in registered extensions of protection.