1904.02(c) Examination of Identification of Goods/Services in §66(a) Applications
Although the IB determines classification of the goods/services, for purposes of identification, the examining attorney will examine the identification of goods/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. Specifically, the examining attorney must follow the procedures set forth in the TMEP and identify the goods/services in accordance with the USPTO’s Acceptable Identification of Goods and Services Manual ("USPTO ID Manual") whenever possible. However, with respect to requests for extension of protection to the U.S., the assigned classes define the scope of the goods/services for the purpose of determining the extent to which the identification may be amended in accordance with 37 C.F.R. §2.71.
When the IB is unable to determine if the classification assigned to particular goods/services by an applicant’s Office of origin is correct, the IB will request clarification. If no clarification is provided, the IB will include the unclear wording from the international application in the international registration and will indicate, in parentheses, that the wording is "considered too vague for classification," "incomprehensible," or "linguistically incorrect." Although included in the listing of goods/services of the request for extension of protection, the parenthetical language is not part of the scope of the identification and must not be part of any application that is eventually approved for publication.
The language inside the parentheses should not be examined, but the goods/services preceding the parenthetical language should be examined and an acceptable amendment required that is definite and within the scope of the class assigned by the IB. For example, the §66(a) application identified the goods as "Accessories for domestic animals (in the opinion of the International Bureau, the terms are too vague for the purposes of classification - see Rule 13(2)(b) of the Common Regulations)," in Class 21. The wording "accessories for domestic animals" should be examined and an acceptable amendment within Class 21 suggested, such as "accessories for domestic animals, namely, bowls, trays, sponges, brushes, and cages." The parenthetical wording "(in the opinion of the International Bureau, the terms are too vague for the purposes of classification - see Rule 13(2)(b) of the Common Regulations)" and the parentheses must not be part of any suggested amendment and must not appear in the final identification of goods/services.
If the wording preceding the parenthetical language is definite according to USPTO practice, the identification should be accepted. The parenthetical language "(in the opinion of the International Bureau, the terms are too vague for the purposes of classification - see Rule 13(2)(b) of the Common Regulations)" and the parentheses must be removed and must not appear in the final identification of goods/services. If it is otherwise necessary to issue an Office action, the action must include notice that the parenthetical language and the parentheses will be removed from the identification. If it is otherwise unnecessary to issue an Office action, a no-call examiner’s amendment must be issued to document the removal of the wording. A no-call examiner’s amendment is acceptable in this situation because the parenthetical language is provided to the USPTO for informational purposes only and documentation of the removal is for purposes of notice to the applicant only and does not "amend" the application.
If the initial identification of goods/services in the §66(a) application is definite, but misclassified under United States standards, the examining attorney must accept the identification, and cannot change the classification. If the initial identification of goods/services is not definite, the classification cannot be changed and the scope of the identification for purposes of permissible amendment is limited by the IB-assigned classification. See TMEP §§1401.03(d), 1402.01(c), and 1402.07(a). Because the international registration is limited to those classes assigned by the IB, the identification includes only those products or services falling within the identified classes. To propose an amendment outside of the scope of the classes would result in the lack of a basis for registration of such goods/services under U.S. law.
If a §66(a) applicant wants to seek registration for goods, services, or class(es) which are included in the international registration but were not originally included in the request for extension of protection to the United States, the §66(a) applicant must file a subsequent designation with the IB. Article 3ter(2); Guide to International Registration, B.II.32.03. To seek registration for good/services not within the scope of the international registration, the applicant may file a separate application for the same mark under §1 and/or §44.
The identification of goods/services must be specific, definite, clear, accurate, and concise. See TMEP §1402.01 and cases cited therein. The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods or services covered by the mark. In re Omega SA, 494 F.3d 1363, 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). Even if the IB characterizes terms as "too vague," "incomprehensible," or "linguistically incorrect," the USPTO has discretion to consider them de novo based on established policies regarding specificity within the context of the class assigned.
Generally, there are three types of identifications: (1) acceptable identifications of goods/services; (2) indefinite identifications of goods/services with acceptable options within the scope of the class; and (3) indefinite identifications of goods/services that do not include any goods/services in the designated class.
1904.02(c)(i) Acceptable Identifications of Goods/Services
When the identification of goods/services is definite in accordance with USPTO policies, the identification is acceptable, regardless of the class assigned. If the goods/services are classified in accordance with the current edition of the Nice Agreement, no further requirements are necessary.
An international registration may encompass goods/services that were classified under an earlier version of the Nice Agreement. If the IB’s classification of goods/services in the §66(a) application is different from the classification currently set forth in the USPTO ID Manual, the examining attorney will not require amendment of the classification. However, the examining attorney should notify the Administrator for Trademark Classification Policy and Practice ("Administrator") of the serial number, using the internal TM Madrid ID/Class mailbox. The goods/services cannot be moved to another class identified in the application. 37 C.F.R. §2.85(d).
With respect to acceptable goods/services that appear to be misclassified, if the examining attorney determines that the class would be proper were the goods/services amended with further clarifying language, the examining attorney may require an amendment for further specificity to limit the identification to goods/services that are in the class indicated in the international registration.
Examples:
- The goods are identified as "footwear" in Class 25. The wording is definite and the IB has assigned the correct class. No action necessary.
- The services are identified as "legal services," but the IB has assigned Class 42. The wording is definite, but the class is not consistent with the current edition of the Nice Agreement. No action is necessary. The examining attorney should notify the Administrator of the serial number.
- The goods are identified as "tobacco," but the IB has assigned Class 35. The Alphabetical List of the Nice Agreement classifies such goods in Class 34. The examining attorney will accept the goods in the assigned class. The examining attorney should notify the Administrator of the serial number.
- The goods are identified as "pasta," but the IB has assigned Class 3. The Alphabetical List of the Nice Agreement classifies such goods in Class 30. The examining attorney will accept the goods in the assigned class, and notify the Administrator of the serial number.
- The goods are identified as "nutritional supplements as included in this class," but the IB has assigned Class 29. Even with the wording added to "nutritional supplements," the identification of goods remains definite, but the class is not consistent with the USPTO Identification and Classification of Goods and Services Manual. The examining attorney will accept the goods in the assigned class, and notify the Administrator of the serial number.
1904.02(c)(ii) Indefinite Identification of Goods/Services with Acceptable Options Within the Scope of the Class
When the identification of goods/services is unacceptable as indefinite, and more specific language that identifies goods/services in the class can be suggested, the examining attorney must require amendment of the wording and advise the applicant that any proposed amendment must be within the scope of the class of the international registration. The examining attorney should suggest acceptable identification(s) within the class. Any proposed amendment must also be within the scope of the wording of the identification as originally indicated (37 C.F.R. §2.71(a)).
Examples:
- The goods are identified as "headgear" in Class 25. A requirement for greater specificity is issued, offering suggestions for more narrowly identified goods in Class 25, such as "headgear, namely hats, beanies, bathing caps." The examining attorney should not suggest items within the scope of "headgear" that are not in Class 25, such as "helmets" in Class 9 or "headgear for orthodontic appliances" in Class 10. The Office action must include an advisory that only goods within the scope of the IB-assigned class will be accepted.
- The services are identified as "consultation services" in Class 36. A requirement for more specificity is issued, offering suggestions for more narrowly recited services in Class 36, such as "banking consultation," "credit consultation," or "financial consultation." The Office action must include an advisory that only services within the scope of the IB-assigned class will be accepted.
- The goods are identified as "video games" in Class 28. The examining attorney may suggest that the applicant adopt "hand held unit for playing video games," "stand alone video game machines," or "video game machines for use with televisions" in Class 28. A proposed amendment including goods in the nature of "video game software," or "video game cartridges" (both of which are Class 9 items under the current edition of the Nice Agreement) would be outside of the scope of the goods covered by the international registration, and such an amendment must be refused. The Office action must include an advisory that amendments may only include goods within the scope of the class assigned by the IB.
1904.02(c)(iii) Indefinite Identification of Goods/Services that Does Not Include Any Goods/Services Within the Class
In the rare situation where the identification is indefinite, and there appear to be no goods/services that are within the scope of the identification as presently worded that are properly classified in the indicated class, the examining attorney must nevertheless require the applicant to submit an acceptably definite identification. To be acceptable, any submitted amendment must be within the scope of the wording of the original goods/services.
The examining attorney should explain that he/she is unable to suggest substitute wording. The examining attorney may offer the applicant the option of deleting the unacceptable language from the application, but must not issue a requirement for the applicant to do so.
Examples:
- The services are identified as "food services" in Class 36. The identification is too broad to be acceptable, yet does not encompass any services that currently would be properly classified in Class 36, as restaurant services and other similar food and beverage services are in Class 43. The examining attorney need not make any suggestions as to acceptable wording, but must require the applicant to amend the recitation within the scope of services properly classified in Class 36 in accordance with the current edition of the Nice Agreement, and notify the Administrator of the serial number.
- The goods are identified as "engine pumps" in Class 12. The identification is too broad to be acceptable, yet does not encompass any goods that currently would be properly classified in Class 12, as water and oil pumps for land vehicle engines are in Class 7. The examining attorney need not make any suggestions as to acceptable wording, but must require the applicant to amend the identification within the scope of goods properly classified in Class 12 in accordance with the current edition of the Nice Agreement, and notify the Administrator of the serial number.
1904.02(c)(iv) Examination of Proposed Amendments and Issuance of Final Requirements for an Acceptable Identification
If, in response to the Office action, an applicant proposes an amendment that: (1) remains unacceptably indefinite; (2) is beyond the scope of the original wording; or (3) is beyond the scope of the class, the examining attorney must refuse to accept the amendment. If the proposed amendment raises no new issues and the application is otherwise in condition for a final action, the examining attorney must issue a final requirement for an acceptable identification.
The basis for refusing an unacceptably indefinite identification is the requirement for a list of "particular goods and services" in a complete application. 37 C.F.R. §2.32(a)(6). Trademark Rule 2.71(a) provides the basis for refusal of a proposed amendment that exceeds the scope of the originally identified goods/services, including wording beyond the scope of the class of the international registration. The applicant is not bound by the scope of the language in the unacceptable amendment but, rather, by the language of the identification before the proposed amendment. See TMEP §1402.07(d). The examining attorney should also advise the applicant that the previous items listed in the existing identification (not the unacceptable substitute) remain operative for purposes of future amendment. Once an applicant amends the identification of goods/services in a manner that is acceptable to the examining attorney, the amendment replaces all previous identifications, and thus restricts the scope of goods/services to that amended language. See TMEP §1402.07(e).
The examining attorney may suggest – but must not require – that the applicant delete an unacceptable term or phrase or proposed goods/services entry that fall outside the scope of the class. If the application contains acceptable goods/services that can be approved for publication, and would otherwise be in condition for a partial abandonment advisory, the examining attorney should indicate that if an acceptable response is not received, the unacceptable goods/services will be abandoned and the application will proceed with the acceptable items only. See TMEP §718.02(a) regarding partial abandonment.
If deletion or abandonment of an unacceptable term or phrase would result in deletion of all goods/services from the §66(a) application, the examining attorney must not suggest that the applicant delete the unacceptable wording. Instead, the examining attorney must continue to require an acceptable amendment, making the requirement final if appropriate.
If it appears that there is an error in classification, the examining attorney may suggest the applicant contact the IB to request correction of or a limitation to the international registration. The USPTO will not suspend prosecution of the application unless the applicant requests suspension in a timely response to an Office action and supports the request with a copy of the request for correction filed with the IB. See TMEP §716.02(g). The applicant may also appeal the final identification requirement to the Trademark Trial and Appeal Board or petition the Director under 37 C.F.R. §2.146 to review the requirement, if permitted by 37 C.F.R. §2.63(b)(2). See TMEP §1501.01 regarding appealable matter and TMEP §1704 regarding petitionable subject matter.
1904.02(c)(v) Effect of Indicated Classes – No Precedential Value on Later-Filed Applications
Article 3 of the Madrid Protocol requires the goods and services of the international application to be classified according to the Nice Agreement. The IB uses the edition of the Nice Agreement in effect at the time international registration is sought to classify the goods and services. The opinion of the IB with respect to classification prevails over that of the applicant and the Office of origin in the event of disagreement. Article 3(2).
Because the IB, rather than the USPTO, determines classification assigned to goods and services encompassed by the international registration, and because registered extensions of protection may be based upon international registrations issued under previous editions of the Nice Agreement, the assigned classes in registered extensions of protection will not be considered as controlling in any later-filed U.S. applications to the extent such classification is contrary to USPTO policy. The classification of goods/services in registered extensions of protection and published applications under §66(a) is only relevant to the particular goods and services identified therein, and should not be relied upon in other applications to support classification or identification of goods or services that are otherwise unacceptable under current USPTO practice. See TMEP §1402.14.