TMEP 819.01(g): Identification and Classification of Goods/Services

October 2017 Edition of the TMEP

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819.01(g)    Identification and Classification of Goods/Services

USPTO ID Manual.  The application must include correctly classified goods and/or services, with an identification of goods/services taken directly from the USPTO ID Manual, available through the TEAS Plus form. 37 C.F.R. §2.22(a)(8).  The TEAS Plus form will automatically provide the correct class for goods/services selected from the USPTO ID Manual, and it will not permit the applicant to edit the "Classification" field.

To enter an identification of goods/services, the TEAS Plus form will instruct the applicant to enter search terms appropriate for the desired goods/services within the identified field on the TEAS Plus form.  The TEAS Plus system will then retrieve relevant entries from the USPTO ID Manual, and the applicant must select one or more of the entries.

Amendment of Identification.  No additional fee is required if the identification of goods/services is acceptable and correctly classified as filed, but is later amended, either in response to a requirement or on the applicant’s initiative.  This is true even if the amendment is unacceptable.

Example:  The goods are identified in the application as "pants" and "shirts," and the applicant files a voluntary amendment to "pants, shirts and dresses."  The examining attorney will refuse the amended identification because "dresses" is beyond the scope of the original identification (37 C.F.R. §2.71(a) ), but no additional fee will be required.

Fill-in-the-Blank Element.  Some USPTO ID Manual entries require the applicant to complete parenthetical information (e.g., "specify the function of the programs").  The display of such entries will include a free-text field so the applicant can type the necessary information, following the instructions within the listing.  If an applicant attempts to use such a listing without completing the required information, TEAS Plus will generate an error message.

No additional fee is required if the identification of goods/services has a fill-in-the-blank element, and the applicant inserts information that is a reasonable attempt to supply the required information in accordance with the instructions, but requires amendment because the inserted information: (1) sets forth goods/services in another class (e.g., headgear, namely, football helmets (headgear that is clothing is in Class 25, helmets are in Class 9)); (2) is indefinite (e.g., maternity clothing, namely, sportswear); or (3) is inaccurate ( see TMEP §1402.05).

However, an additional fee is required if the applicant leaves the fill-in-the-blank element empty, inserts information that is clearly inappropriate for the selected identification, or inserts additional goods/services that are unrelated to the selected identification.  For example, an additional fee is required if the goods/services in the original application are identified as follows:

  • "processed meat, namely, laptop computers;"
  • "bicycle parts, namely, bicycle parts;"
  • "cutlery, namely forks, knives, and rain jackets for dogs;" or
  • "sound recordings featuring music, and sunglasses."

In these situations, the applicant has, in effect, failed to submit an identification from the USPTO ID Manual.  The additional fee is required even if the applicant deletes the unacceptable terminology.

Classification.  Trademark Rule 2.22(a)(8) indicates that if the applicant classified the goods/services in the wrong class in the initial application, the applicant will lose TEAS Plus status and will be required to pay the additional fee for all classes in the application.  However, this is unlikely to occur, because the TEAS Plus form will automatically provide the correct class for goods/services selected from the USPTO ID Manual in the TEAS Plus form, and it will not permit the applicant to edit the "Classification" field.  No additional fee is required if the identification is acceptable and correctly classified as filed, but is amended during examination to add or substitute another class (e.g., amendment from "headwear" in Class 25 to "protective helmets for sports" in Class 9; or amendment from "footwear" in Class 25 to "orthopedic footwear" in Class 10), as long as the amendment is filed through TEAS or entered by examiner’s amendment.  See TMEP §819.03 regarding the addition of classes to a TEAS Plus application.

Section 44 - Goods/Services Exceed Scope of Foreign Registration.  In a §44 application, the additional fee is required if the examining attorney determines that the goods/services for which registration is sought under §44 in the U.S. application exceed the scope of those in the foreign registration. 37 C.F.R. §2.22(a)(8).