1402.05 Accuracy of Identification
An identification is unacceptable if it is inconsistent with the goods or services indicated by the specimens, or if the ordinary meaning of the identification language is at variance with the goods or services evidenced by the specimens or any other part of the record.
The examining attorney may require an amendment of the identification language to accurately describe the goods or services. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (affirming decision that the examining attorney properly required amendment of the term "chronographs" in the identification of goods so that proper classification could be determined); In re Faucher Indus. Inc., 107 USPQ2d 1355, 1361 (TTAB 2013) (finding that examining attorney properly questioned the nature of the goods and required that the identification of goods be amended to disclose the material composition of the goods so that proper classification could be determined). Moreover, the examining attorney must require an amendment to the identification language when it includes broad wording that would normally be acceptable, but the specimen(s) shows that the actual goods or services are a specialized type or are used only in a specialized trade channel. In this situation, the broad identification would be overly broad and misleading. The amended identification should specify the specialized characteristic or specialized trade channel to accurately describe the goods or services. In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1335 (TTAB 2009) (Board stating that "[t]he Office’s requirement that the examining attorney ensure the accuracy of the identification of goods is abundantly clear."); In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff’g 204 USPQ 261 (TTAB 1979) (examining attorney has discretion to require applicant to state whether goods are packaged in container to which mark refers); Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 236 F.2d 423, 111 USPQ 105 (C.C.P.A. 1956) (requirement to restrict identification to "outboard motors" considered proper); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505, 509 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974) (noting that, in view of specimens, greater specificity should have been required in identifying registrant’s detergent product); In re Toro Mfg. Corp., 174 USPQ 241 (TTAB 1972) (noting that use on "grass-catcher bags for lawn-mowers" did not justify the broad identification "bags," which would encompass goods diverse from and commercially unrelated to applicant’s specialized article); Ex parte Consulting Engineer Publishing Co., 115 USPQ 240 (Comm’r Pats. 1957) (amendment of "periodical" to "monthly news bulletin" required).
In Petroglyph Games, 91 USPQ2d at 1336, the Board addressed the question of whether the identification "computer game software" was accurate for the mark BATTLECAM if the mark was being used only for a feature of a computer game. The Board found that the subsets of computer code identified by the mark, which the specimen indicated supported only particular aspects or features of the computer game, could also be accurately identified as "computer game software," noting that although "there is a market for selling or distributing to computer game players all the software that allows a game to be played in its entirety, there may also be a market for computer game software related to only certain game features, perhaps among game developers or producers who might want to include a particular feature in a complete game, or perhaps among players seeking after-market add-ons or enhancements for existing games." Therefore, it would not be inaccurate to identify such software simply as "computer game software."
The wording of an identification cannot be amended to accurately describe the goods or services if the amendment would add to or expand the scope of the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07 et seq.
1402.05(a) Goods That Are Components or Ingredients
When a mark is used to identify only a component or ingredient of a product, and not the entire product, the identification should precisely set forth the component or ingredient. In other words, when the specimen or other material in the record clearly indicates that the mark relates only to a distinguishable part, component, or ingredient of a composite or finished product, then the application should identify that component or ingredient as the goods. The identification should leave no doubt that the mark refers only to one part and not to the entire product. Also, the identification should indicate the types of finished products of which the identified components or ingredients form a part, e.g., "liposomes sold as an ingredient in face creams." See Ex parte The Joseph & Feiss Co., 114 USPQ 463 (Comm’r Pats. 1957); Ex parte Palm Beach Co., 114 USPQ 463 (Comm’r Pats. 1957); Mercantile Stores Co., Inc. v. The Joseph & Feiss Co., 112 USPQ 298 (Comm’r Pats. 1957); In re Libbey-Owens-Ford Glass Co., 75 USPQ 202 (Comm’r Pats. 1947).
If the mark does not pertain solely to a component or ingredient rather than the finished or composite product, the identification should not specify the component or ingredient as the goods.
When classifying component or ingredient marks, a distinction should be made between (1) marks that identify products sold as separate ingredients or components and ingredients for use in the manufacture of the finished product, and (2) marks that identify components or ingredients sold as part of the finished product. In the first situation, the goods are classified in the class of the component or ingredient since it has not yet been transformed into the finished product. In the second, the goods are classified in the class of the finished product, since the component or ingredient has now been incorporated into other finished goods. In these situations, the examining attorney should examine the specimen to determine whether it shows use of the mark to identify the separate component or ingredient or the finished product in its entirety.
Example – The identification of goods lists "balsam extracts." The specimen shows use of the mark on a bottle of shampoo to identify a particular ingredient of the shampoo, while the shampoo itself is identified by a different mark. As the mark for which registration is sought identifies a component ingredient of a finished product and not a separate finished product, the identification must specify that the goods are "balsam extracts sold as a component ingredient of shampoos" and the proper classification is that of "shampoos," namely, Class 3.
The same rules of language construction for purposes of amendment, as set forth in TMEP §§1402.01 et seq., 1402.06 et seq., and 1402.07 et seq., apply to amendments of identifications to indicate components or ingredients. Thus, whether an identification may be amended will depend on the particular circumstances of each application.
Example - The indefinite term "fabric" may be amended to the definite identification "fabric for use in the manufacture of slacks" but may not be amended to "slacks," which is beyond the scope of the identification.
See TMEP §1402.05 regarding accuracy of the identification.
1402.05(b) Material Composition
If an identification of goods is specific, but the goods could be classified in more than one class depending on the material composition, then the material composition must be indicated in the identification of the goods.
Example - "Statues" refers to specific items; however, the classification depends on the material composition. "Statues of non-precious metal" are classified in Class 6; "statues of precious metal" are classified in Class 14; "statues of wax, wood, plaster, or plastic" are classified in Class 20; and "statues of glass or porcelain" are classified in Class 21.
However, in certain situations, because of the nature of the particular industry and the knowledge that the items are made out of different materials and are classified accordingly, an indication of the material composition in the identification may be unnecessary. See TMEP §§1401.07 and 1402.03 for further explanation.