1402.01 Specifying the Goods and/or Services - in General

A written application must specify the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. 15 U.S.C. §§1051(a)(2) and 1051(b)(2); 37 C.F.R. §2.32(a)(6). To "specify" means to name in an explicit manner. The identification should set forth common names, using terminology that is generally understood. For products or services that do not have common names, the applicant should use clear and succinct language to describe or explain the item. Technical or esoteric language and lengthy descriptions of characteristics or uses are not appropriate.

The language used to describe goods and/or services should be understandable to the average person and should not require an in-depth knowledge of the relevant field. An identification may include terms of art in a particular field or industry, but, if these terms are not widely understood by the general population, the identification should include an explanation of the specialized terminology.

The identification of goods and/or services must be specific, definite, clear, accurate, and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm’r Pats. 1954); Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953).

The applicant must identify the goods and services specifically to provide public notice and to enable the USPTO to classify the goods and services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d). The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods and/or services covered by the mark. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).

Terminology that includes items in more than one class is considered indefinite, even with such additional wording as "included in this class" at the end of the identification. See id. ("chronographs" held indefinite because it includes both time recording devices in Class 9 and watches in Class 14 and because merely classifying the goods in only one of the classes does not preclude a requirement for further specificity in the identification).

Example: "Blankets" is not acceptable without qualifying wording because it is not particular enough to identify the kind of blanket on which the mark is used, e.g., fire blankets (Class 9), electric blankets (Class 11), horse blankets (Class 18), and bed blankets (Class 24).

However, the conclusion that a term would clearly include items classified in more than one class should not be drawn unless reasonable, in light of the evidence of record. See In re Thor Tech, Inc., 85 USPQ2d 1474 (TTAB 2007) ("park trailer" held to be an acceptable identification, where the applicant’s evidence showed that it is a term of art generally understood by those in the industry and by consumers as a designation for a type of recreational vehicle, which unambiguously places it in Class 12; Board was not persuaded by the examining attorney’s argument that the identification was indefinite because it could also encompass mobile homes in Class 19.).

The accuracy of identification language in the original application is important because the identification cannot later be expanded. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07 et seq.; In re M.V Et Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991).

See TMEP §1306.06(e) regarding the identification of goods and services in certification mark applications and TMEP §1304.08(d) regarding identification language in collective membership mark applications.

1402.01(a) General Guidelines for Acceptable Identifications of Goods or Services

With few exceptions, an identification of goods and services will be considered acceptable if it:

Describes the goods and/or services so that an English speaker could understand what the goods and/or services are, even if the grammar or phrasing is not optimal;
Meets the standards (not necessarily the language) set forth in the ID Manual;
Is not a class heading; and
Is in the correct class, i.e., there is no language in the identification that makes classification difficult or ambiguous; each class lists goods or services that are clearly in a single class.

Deference should be given to the language set forth by the applicant in the original application.

If an identification contains spelling errors, the examining attorney must require correction. Obvious spelling errors in an identification may be corrected by examiner’s amendment without contacting the applicant. See TMEP §707.02. However, British variants of American spellings (e.g., colour, vapour, and organise) are acceptable and need not be changed.

In general, commas should be used in the identification to separate items within a particular category of goods or services. When the items are preceded by the word "namely," a comma should always be used before and after that term. For example, "clothing, namely, hats, caps, sweaters, and jeans" is an acceptable identification of goods in Class 25 and shows proper use of commas.

Semicolons should generally be used to separate distinct categories of goods or services within a single class. For example, "cleaners, namely, glass cleaners, oven cleaners, and carpet cleaners; deodorizers for pets" is an acceptable identification in Class 3. In this example, the word "cleaners" names the category covering "glass cleaners, oven cleaners, and carpet cleaners." The semicolon prior to "deodorizers for pets" indicates that the deodorizers are a separate category of goods from the cleaners. See In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1166 (TTAB 2013) (finding that, because a semicolon separated the two relevant clauses in registrant’s identification, its "restaurant and bar services" is a discrete category of services that stands alone and independently as a basis for likelihood-of-confusion analysis, and is not connected to nor dependent on the services set out on the other side of the semicolon).

Care should be taken to use commas and semicolons properly when identifying items that are part of a kit. In general, items that are to be sold together (e.g., as components of a system or kit) should be separated by commas. However, other goods within the same class that are to be sold independently of the kit or system should be separated by semicolons. This is an exception to the general rule regarding using semicolons to separate categories of goods. Here the semicolons are used to separate items that in a non-kit identification would be separated by commas. For example, an identification that includes kits comprised of several items, as well as other goods sold independently from the kits, should be punctuated as follows: "beauty supplies, namely, makeup kits comprised of makeup, lipstick, eye shadow, and applicator brushes; skin lotions; moisturizing soaps; and facial scrubs." The use of "and" before "applicator brushes" indicates that they are the final items contained in the kit. The use of semicolons indicates that "skin lotions," "moisturizing soaps," and "facial scrubs" are separate items and are not included in the make-up kits.

Colons and periods should not be used as punctuation within the identification of goods and services.

1402.01(b) Identification of Goods and Services in a §44 Application

The identification of goods and services in an application based on §44 of the Trademark Act, 15 U.S.C. §1126, must comply with the same standards that govern other applications. The applicant must identify the goods and services specifically, to enable the USPTO to classify the goods and services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).

Foreign registrations often include broad statements identifying the goods and services. In many cases, the identification is merely a repetition of the entire general class heading for a given class. These broad identifications are generally unacceptable in United States applications. The identification of goods and/or services in the United States application must be definite and specific even if the foreign registration includes an overly broad identification. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (noting that the USPTO has discretion to require greater particularity than an entry in WIPO’s Alphabetical List of goods and services); In re Fiat Grp. Mktg. & Corporate Commc'ns S.p.A., 109 USPQ2d 1593 (TTAB 2014); In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).

Furthermore, in an application based on §44 of the Trademark Act, the identification of goods and services covered by the §44 basis in the United States application may not exceed the scope of the goods and services identified in the foreign registration. Marmark Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843 (TTAB 1989); In re Löwenbräu München, 175 USPQ 178 (TTAB 1972). However, if the applicant also relies on use in commerce under §1(a) or intent-to-use in commerce under §1(b) as a filing basis, the identification may include goods or services not listed in the foreign registration, if the applicant specifically limits the §44 basis to the goods and/or services covered by the foreign registration. 37 C.F.R. §2.32(a)(6). See TMEP §§806.02 et seq. regarding multiple-basis applications.

If a foreign registration in a single class includes a broad statement identifying the goods or services and the USPTO determines that the goods or services identified are in more than one class, the applicant may rely on the same foreign registration to cover the additional classes in the United States application, provided that the identification in the foreign registration encompasses all goods and/or services identified in the United States application and the applicant pays the fees to add the additional classes in the United States application. See TMEP §§1403 et seq. regarding multiple-class applications.

1402.01(c) Identification and Classification of Goods and Services in a §66(a) Application

The identification of goods and services in an application based on §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), must comply with the same standards that govern applications under §1 or §44. The applicant must identify the goods and services specifically to provide public notice and to enable the USPTO to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).

The examining attorney will examine the identification of goods and/or services in a §66(a) application according to the same standards of specificity used in examining applications under §1 and §44 of the Trademark Act, 15 U.S.C. §§1051 and 1126. That is, the examining attorney must follow the procedures set forth in the TMEP and identify the goods and/or services in accordance with the principles set forth in the ID Manual, whenever possible. Thus, although international registrations often include broad statements identifying the goods and services, and in many cases use the entire class heading for a given class, these broad identifications are generally unacceptable in United States applications. The identification of goods and/or services in the request for extension of protection to the United States must be definite and specific even if the international registration includes an overly broad identification. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (noting that the USPTO has discretion to require greater particularity than an entry in WIPO’s Alphabetical List of goods and services).

When the original identification of goods and/or services in a §66(a) application is definite, but misclassified under United States standards, the examining attorney must accept the identification.

The international classification of goods and/or services in a §66(a) application cannot be changed from the classification assigned by the IB. If the IB’s classification of goods or services in the §66(a) application is different from the classification set forth in the ID Manual, the examining attorney will not request an amendment of the classification. In addition, the goods or services cannot be moved to another class identified in the application. 37 C.F.R. §2.85(d); TMEP §§1401.03(d) and 1904.02(b). The examining attorney should notify the Office of the Administrator for Trademark Classification Policy and Practice of each occurrence of definite, misclassified goods or services.

When a proposed amendment to the identification is definite, but describes goods and/or services in a class other than the original class assigned by the IB, the examining attorney will not accept it because the amended identification is outside the scope of the original goods and/or services. Because the international registration is limited to the class(es) assigned by the IB, any amendments to the identification of goods/services may only include goods or services that are properly within the scope of the class(es) set out in the §66(a) application. The inclusion of any goods and/or services outside of the scope of the IB-assigned class(es) in a §66(a) application would result in the lack of a basis for registration of such goods/services under U.S. law.See also TMEP §§1904.02(c) et seq. regarding the examination of the identification of goods and services in a §66(a) application.

1402.01(d) Location of "Identification of Goods and Services"

Paper Application. If the applicant submits a separate drawing page in a paper application, this page is considered part of the written application and not a separate element. Any goods or services listed on the drawing page in a paper application will be considered part of the "identification of goods and services," even if they do not appear within the body of the application.

There is no requirement that goods or services be listed in any particular place within the body of a written paper application. See In re Atlantic Scientific Corp., 47 USPQ2d 1959 (Comm'r Pats. 1998). However, goods or services referenced only on the specimen(s) are not considered part of the identification.

TEAS, TEAS RF, or TEAS Plus Application. In a TEAS, TEAS RF, or TEAS Plus application, only goods and/or services listed in the proper field will be considered part of the identification.

§66(a) Application. In an application under §66(a), the listing of goods and/or services for which the holder of an international registration seeks protection in the United States is transmitted to the USPTO from the IB. The goods and/or services may be all of those listed in the international registration – the "basic goods/services." Alternatively, the holder of an international registration may seek protection for less than all the goods/services listed in the international registration. In such cases, in addition to the "Basic Goods/Services," the §66(a) application will contain "Limitation" details. The "limited" goods/services are the operative goods/services for the purposes of examination. Further limitations may be transmitted from the IB. Such limitations are processed by the Madrid Processing Unit (MPU) and examining attorneys are notified of changes as appropriate. See TMEP §1904.02(e)(ii) regarding limitations.

1402.01(e) Responsibilities of Examining Attorney as to Identification

It is the applicant’s duty and prerogative to identify the goods and services. However, the examining attorney may require amendment of the identification of goods and/or services to ensure that it is clear and accurate and conforms to the requirements of the statute and rules. The examining attorney should explain clearly and concisely the reason for requiring an amendment.

Under 37 C.F.R. §2.61(b), the examining attorney may require information and evidence, if necessary, to ascertain the nature of the goods and/or services or otherwise permit proper examination of the application. See TMEP §814.

When requiring amendment to the identification, the examining attorney should advise the applicant that goods or services deleted by amendment may not be reinserted at a later point in prosecution. See TMEP §§1402.06(a) and 1402.07(e). Examining attorneys should take particular care to ensure that pro se applicants are aware of the restrictions on amendments to the identification of goods and services.

To determine proper classification and the acceptability of the language in an identification of goods and/or services, the examining attorney should refer to the resources provided by the USPTO relating to the principles of classification under the Nice Agreement and USPTO practices with regard to specificity of goods and services. After consulting these resources, if the examining attorney is uncertain as to the proper classification or acceptability of language in an identification, he or she should consult with a senior or managing attorney. If the issue still remains unresolved, questions about policy and practice regarding the goods or services at issue may be referred to the Office of the Administrator for Trademark Classification Policy and Practice.

The examining attorney has the discretion to issue a final refusal based on a requirement to amend the identification of goods and/or services. Examining attorneys should make every effort to resolve these issues, and should suggest an acceptable identification, if possible. The Office of the Administrator for Trademark Classification Policy and Practice should be consulted, whenever necessary, to resolve identification and classification issues that are the subjects of appeals, and copies of appeal briefs that involve those issues should be sent to the Office of the Administrator for monitoring purposes.

See §§718.02(a) and 1402.13 for information regarding a requirement for an amendment of the identification of goods and/or services that is expressly limited to only certain goods/services.