1904.02(f) Restrictions to Goods/Services

A restriction is a narrowing amendment to the goods/services in some or all pending and registered extensions of protection. Some types of restrictions also impact the listing of goods/services in the international registration. Restrictions include limitations, cancellations, and ceasings of effect. A limitation is an amendment to some or all of the goods/services in one or more extensions of protection that the holder files with the IB. The listing of goods/services in the international registration are not impacted by limitations. Article 9 bis; Common Reg. 25(1)(a)(ii). A cancellation is an amendment to some or all of the goods/services in the international registration that then affects all of the extensions of protection. A cancellation is filed by the holder with the IB. Article 9bis; Common Reg. 25(1)(a)(v). A ceasing of effect occurs when some or all of the goods/services have been removed from the basic application or registration due to a judicial action or proceeding or by voluntary action by the holder. For a period of five years from the date of the international registration, such changes to the listing of goods/services in the basic application or registration will result in a ceasing of effect of those goods/services in the international registration and all extensions of protection. The Office of origin notifies the IB of the ceasing of effect, and the IB then notifies all of the designated Contracting Parties. Article 6(3); Common Reg. 22.

See TMEP §§1904.02(f)(i) and 1906.01(e) regarding limitations, TMEP §§1904.02(f)(iii), 1904.08, and 1906.01(e) regarding cancellations, and TMEP §§1904.02(f)(iv) and 1904.15(c) regarding ceasings of effect.

1904.02(f)(i) Limitations to Goods/Services

The holder of an international registration may file with the IB a voluntary amendment of the goods/services that narrows the scope of the identification, called a limitation. A limitation does not remove the goods/services concerned from the international registration but simply narrows the goods/services for which the holder seeks protection in the particular designated Contracting Parties. See TMEP §1906.01(e) regarding the filing of a request to record a limitation with the IB.

An international application or subsequent designation may contain limitations of the listing of goods/services in respect of one or more designated Contracting Parties. Common Regs. 9(4)(a)(xiii). A limitation also may be filed with the IB separately from the international application or subsequent designation. Article 9bis(iii). Upon recordation, the IB will notify the USPTO if a U.S. application or registration is affected by the limitation. The limitation may appear in the §66(a) application form or in the application record as a separate filing. See TMEP §1904.03(g)(i) regarding limitations in pending requests for extension of protection (§66(a) applications) and TMEP §1904.15(a) regarding limitations in registered extensions of protection (§66(a) registrations).

A limitation may only restrict the scope of the goods/services; it may not broaden or extend the listing of goods/services in a pending or registered extension of protection beyond the scope of the basic listing of goods/services or beyond the operative listing of goods/services. See TMEP §§1402.07(a) and 1904.02(c)-(c)(iv).

See also TMEP §1904.03(g)(i) regarding determining whether a limitation is within the scope of the basic goods/services and regarding assessing limited goods/services with respect to interceding amendments to the identification and any prior limitations.

1904.02(f)(ii) Limitations vs. Amendments to Goods and Services

A limitation filed by the applicant with the IB may affect pending or registered extensions of protection in some or all of the Contracting Parties. By contrast, an amendment to the identification of goods/services in a §66(a) application is comparable to a limitation affecting only the United States in that the amendment affects only the U.S. application. Any extensions of protection to other Contracting Parties are unaffected by amendments to a §66(a) application.

While a limitation filed with the IB may render the identification of goods/services in the §66(a) application sufficiently definite, merely recording a limitation with the IB is not considered a response to an Office Action. See 37 C.F.R §§2.62, 37 C.F.R §2.65(a); TMEP §1904.03(g)(i). If the examining attorney issued an Office action requiring amendment of the identification of goods/services prior to notification of the limitation, a proper response to the Office action still must be received within the response time period. See TMEP §1904.03(g)(i).

The USPTO will review any subsequent limitation to determine its effect on the goods/services for which extension of protection is sought in the United States. Common Reg. 27(5)(a).

See TMEP §1906.01(e) regarding the filing of a request to record a limitation with the IB; TMEP §1904.03(g)(i) regarding limitations in pending requests for extension of protection (§66(a) applications); and TMEP §1904.15(a) regarding limitations in registered extensions of protection to the United States.

1904.02(f)(iii) Partial Cancellation of an International Registration

The holder of an international registration may request the removal or narrowing of some of the goods/services from the international registration by filing a cancellation request with the IB. If such a request complies with applicable requirements, the IB records the partial cancellation in the international registration and notifies all of the Offices of the designated contracting parties. As the cancelled goods are no longer part of the international registration, they are no longer eligible for extension of protection. When the USPTO receives the notification of the partial cancellation, the USPTO will enter it into the record and amend the listing of goods/services to conform to the partial cancellation. See TMEP §1904.03(g)(ii) regarding partial cancellations in a pending request for extension of protection and TMEP §1904.15(b) regarding partial cancellations in registered extensions of protection to the United States.

1904.02(f)(iv) Partial Ceasing of Effect of a Basic Application/Registration

A restriction to the listing of the goods/services in the international registration may occur due to the partial ceasing of effect of the basic application/registration on which the international registration is based. A partial ceasing of effect occurs when some of the goods/services have been removed from or narrowed in the basic application or registration. In such a case, the Office of origin notifies the IB, which in turn records the partial ceasing of effect in the international registration by amending the listing of goods/services in the international registration to reflect the listing in the basic application or registration. The IB then notifies all the Offices of the designated contracting parties. As the ceased goods/services are no longer part of the international registration, they are no longer eligible for extension of protection. Upon receipt of notification of ceasing of effect, the USPTO will enter it into the record and amend the listing of goods/services to conform to the partial ceasing of effect. See TMEP §1904.03(g)(iii) regarding partial ceasings of effect in a pending request for extension of protection and TMEP §1904.15(c) ( regarding partial ceasings of effect in registered extensions of protection to the United States.