1402    Identification of Goods and Services

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).

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 §2(d) of the Trademark Act, 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 U.S. applications.  The identification of goods and/or services in the U.S. 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).

Furthermore, in an application based on §44 of the Trademark Act, the identification of goods and services covered by the §44 basis in the U.S. 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.  See 37 C.F.R. §2.32(a)(6).  See TMEP §806.02 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 U.S. application, provided that the identification in the foreign registration encompasses all goods and/or services identified in the U.S. application and the applicant pays the fees to add the additional classes in the U.S. application.  See TMEP §§1403–1403.06 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 of 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 may not 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 may not 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), 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.

1402.02    Entitlement to Filing Date With Respect to Identification of Goods and Services

An application under §1 or §44 must include an identification of goods or services to receive a filing date.  37 C.F.R. §2.21(a)(4).

Effective October 30, 1999, any goods or services listed on the drawing page of a paper application are considered part of the "identification of goods and services."  However, only goods and/or services listed in the proper field on a TEAS, TEAS RF, or TEAS Plus application will be considered for determining whether the application meets the requirements for receipt of a filing date.

If the application does not identify any recognizable goods or services, the USPTO will deny a filing date.  For example, a filing date will be denied if the identification of goods or services is blank or recites only the following:

• (1) the mark itself;
• (2) a class number;
• (3) wording such as "company name," "corporate name," or "company logo;"
• (4) "Internet services" or "e-commerce services;"
• (5) "business" or "business services;"
• (6) "miscellaneous" or "miscellaneous services;" or
• (7) "personal services."

These examples fail to meet the minimum requirements necessary to receive a filing date under 37 C.F.R. §2.21(a)(4), because they do not provide adequate notice to third parties as to the nature of the goods or services.

In an application under §1 or §44, if an examining attorney finds that the application fails to specify any recognizable goods or services, the examining attorney should have the filing date cancelled for failure to specify recognizable goods or services, under 37 C.F.R. §2.21(a)(4).

If the identification language includes wording that would not be sufficient and other wording that would itself be specific enough to entitle the application to a filing date, the USPTO will grant the application a filing date.  However, any wording that would not otherwise be sufficient for a filing date will not be considered part of the application, and will be disregarded for the purpose of determining the scope of permissible amendments.  For example, if the applicant uses "e-commerce services" along with definite language, such as "online retail store services featuring clothing," the identification of services may only be amended to identify services within the scope of the definite language, i.e., "online retail store services featuring clothing," and may not include services within the scope of "e-commerce services."  Or, if the applicant uses "advertising and business," the USPTO will disregard "business," and the identification may only be amended to services within the scope of the term "advertising."  See TMEP §§1402.07 et seq. regarding the scope of an identification for purposes of amendment.

The fact that goods or services are referenced on the specimen(s) does not satisfy the requirement for an "identification of goods or services."  In a paper application, the application documents themselves (i.e., the written application and/or separate drawing page) must contain a reference to the goods and/or services.  In a TEAS, TEAS RF, or TEAS Plus application, the identification of goods and/or services must appear in the proper field.  See TMEP §1402.01(d) regarding the location of the identification of goods and/or services.

The USPTO will not deny a filing date if the applicant uses the language of an international class heading or indicates that the mark is used on all goods or services in a certain class.  However, the USPTO strongly discourages the use of the language of the international class headings or statements that the mark is used on all goods or services in a class to identify the goods or services for which registration of the mark is sought, and will generally require amendment of any such identification. See In re Fiat Grp. Mktg. & Corporate Commc'ns S.p.A., 109 USPQ2d 1593, 1598 (TTAB 2014) (stating that "use of the words comprising a class heading as an identification in an application filed with the USPTO is not deemed to include all the goods or services in the established scope of that class"); TMEP §1402.07(a).

Section 66(a) Applications. Because the requirements for receipt of a filing date set forth in 37 C.F.R. §2.21 are specifically limited to applications under §1 and §44 of the Trademark Act, 15 U.S.C. §§1051, 1126, the USPTO does not apply these requirements to applications under §66(a) for "filing date" purposes. In an application under §66(a), the date of the international registration, or the effective date of a subsequent designation in which the holder of an international registration seeks extension of protection in the United States, is treated as the effective filing date.

Note also that an applicant is required to submit a verified statement that the applicant is either using the mark in commerce or has a bona fide intention to use the mark in commerce on or in connection with all the goods and/or services set forth in the identification.  It is unlikely that any applicant is using or intends to use a mark on all goods or services within a certain class.  If an applicant claims use or asserts a bona fide intention to use the mark on all goods/services in a particular class but only uses or intends to use the mark on some of those goods/services, the resulting registration could be void.  In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986).

1402.03    Specificity of Terms Used in Identifying Goods and Services

Applicants frequently use broad terms to identify the goods or services in an application.  In applications based solely on §1(a), 15 U.S.C. §1051(a), the applicant must have used the mark in commerce on all of the goods and/or services as of the application filing date.  See First Int’l Services Corp. v. Chuckles, Inc., 5 USPQ2d 1628 (TTAB 1987).  In applications filed under §1(b), 15 U.S.C. §1051(b), and §44, 15 U.S.C. §1126, the applicant must assert a bona fide intent to use the mark in commerce on or in connection with the specified goods and/or services as of the application filing date.  37 C.F.R. §2.33(b)(2). In an application filed under §66(a), 15 U.S.C. §1141f(a), the verified statement is part of the international registration on file at the IB, and must allege that the applicant/holder has a bona fide intention to use the mark in commerce with the goods/services identified in the international application or subsequent designation. 37 C.F.R. §2.33(e)(1). The requirement for use or a bona fide intent to use is not necessarily violated by broad identifying terms.  When a mark is used on a number of items that make up a homogeneous group, a term that identifies the group as a whole would be understood as encompassing products of the same general type that are commercially related.

As long as a broad term identifies the goods or services that are intended to be covered with reasonable certainty, it will be reasonable, from a commercial viewpoint, to consider that the mark has been used for all the related goods or services that fall in the designated group.  See In re Dynamit Nobel AG, 169 USPQ 499 (TTAB 1971) ("ammunition" permitted because its scope was assumed to be understood); In re Port Huron Sulphite & Paper Co., 120 USPQ 343 (TTAB 1959) ("paper other than board papers" approved because of evidence of actual use on various types of paper).

Where an applicant has identified its goods or services very broadly but does not use the mark on a substantial number of related goods/services encompassed by the identification language, the USPTO may require further specificity.

The examining attorney must consider the following guidelines:

• (1) A term that clearly includes particular items that are classified in more than one class (e.g., "artists’ materials") is not acceptable, even with such additional wording as "included in this class" at the end of the identification.  In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) ("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).  Other examples are "blankets," which include such diverse and differently classified types as bed blankets in Class 24, fire blankets in Class 9, and horse blankets in Class 18; "boxes," which include set top boxes and junction boxes in Class 9, music boxes in Class 15, and boxes for holding things, which are classified according to their material compositions; and "sports equipment," because the nature of the equipment will determine the class, i.e., a football helmet would be in Class 9; the football uniform would be in Class 25, and the football padding equipment in Class 28.  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).

    See TMEP §1402.05(b) regarding goods that may be classified in more than one class depending on their material composition.

• (2) Some terminology is sufficient for purposes of according a filing date but too indefinite to enable proper examination (e.g., "metallic parts").  For example, in In re Societe Des Parfums Schiaparelli, S.A., 122 USPQ 349, 350 n.4 (TTAB 1959), clarification of the term "beauty products" was held to be necessary because the term does not have a particular commercial meaning.  In such a situation the examining attorney may seek further information under 37 C.F.R. §2.61(b).  See TMEP §814.
• (3) In rare instances, an identification may include a term that has multiple, entirely different meanings.  If the meaning of such a term can be understood when read in association with the title of the class in which it is placed, and if the term is otherwise satisfactory, the examining attorney need not require amendment to further qualify the term.  For example, "mufflers" in the clothing class would not require further modification to indicate that articles of clothing are intended, rather than automotive mufflers.  The limited number of items to which this applies, however, represents a narrow exception to the general rule that an identification must itself provide a clear indication of the nature of the goods or services, without reference to the class.  See TMEP §§1402.01 and 1402.05(b).  The title of a class cannot be used to define the nature of the goods when the same item could be classified in more than one class depending on its function, material composition, or field of use.  See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) ("chronographs" held indefinite because it includes both chronographs that function as time recording devices in Class 9 and chronographs that function as watches in Class 14).  For example, tools are classified in Class 7 if they are power driven or Class 8 if they are not power driven.  The identification should include wording to assist in determining whether the tools should be classified in Class 7 or 8 (e.g., "powered," "non-powered," "hand tools, namely").  
• (4) The common understanding of words or phrases used in an identification determines the scope and nature of the goods or services.  A basic and widely available dictionary should be consulted to determine the definition or understanding of a commonly used word.
• (5) Many goods are commonly understood to move in a particular channel of trade or have particular attributes.  When those goods are classified in the class that is appropriate for that common understanding, often no further specification as to the nature of those goods is necessary.  However, when the goods have a special use or attributes that are not typically associated with those particular goods that would cause it to be classified in a different class, that use or attribute should be indicated in the identification in order to justify the classification.  For example, "skin lotion" usually refers to a cosmetic product - one that is not medicated.  For that reason, it can be classified in Class 3 without further specification.  However, a skin lotion that is medicated should be classified in Class 5, and the identification should indicate that the product is medicated in order to justify its classification in Class 5 rather than in the more commonly understood and assigned Class 3.

With broad identifications, as with any identification that includes more than one item, the amount of proof (normally by way of specimens) necessary to assure the examining attorney that the mark has been used on "all" the items in the application will vary.  See TMEP §904.01(a).  The USPTO does not require specimens showing use of the mark for every item set forth in an application.  However, if an identification is so broad that it encompasses a wide range of products or services, the applicant may be required to submit evidence that it actually uses the mark on a wide range of products or services to obtain registration.  37 C.F.R. §2.61(b). See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976).  See TMEP §1402.05 regarding accuracy of the identification.

The examining attorney should consider the degree of commercial relationship between the products.  For a closely related group, a specimen showing use of the mark on one item of the group is sufficient.  As the closeness of the relationship becomes less certain, specimens of use on more than one item might be necessary to show generalized use.  37 C.F.R. §2.61(b). The nature of the mark may also be considered.  "House" marks are placed on all the goods that a company produces, whereas a "product" mark that is appropriate only for a specific commodity is used only on that commodity.  See TMEP §1402.03(b) regarding house marks, and TMEP §1402.03(c) regarding identifications that refer to "a full line of" a genre of products.

The appropriateness of any broad identification depends on the facts in the particular case.  The examining attorney should permit applicants to adopt terms that are as broad as the circumstances justify.

1402.03(a)    Inclusive Terminology

The identification should state common names for goods or services, be as complete and specific as possible, and avoid indefinite words and phrases.  The terms "including," "comprising," "such as," "and the like," "and similar goods," "products," "concepts," "like services" and other indefinite terms and phrases are almost always unacceptable.

The terms "namely," "consisting of," "particularly," and "in particular" are definite and are preferred to set forth an identification that requires greater particularity.  The examining attorney will require that vague terminology be replaced by these terms (e.g., power tools, namely, drills in Class 7; needle point kits consisting of needles, thread, and patterns in Class 26; or projectors, particularly projectors for the entertainment industry in Class 9).

In limited situations for closely related goods, certain indefinite terms may be used in explanatory phrases that follow a definite term -- for example, "fabric suitable for making coats, suits, and the like."  See Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953).

"Parts therefor," as related to machinery, is acceptable when it follows a definite identification.  "Accessories therefor" is usually considered indefinite, but it has been allowed in some cases, particularly in the toy field.  Identifications such as "dolls and accessories therefor" and "toy vehicles and accessories therefor" are acceptable because all goods that fall within that broad designation would be classified in Class 28 with the dolls or toy vehicles and could be the basis for a refusal of registration under 15 U.S.C. §1052(d).  However, this phrase should only be used in a situation where it is clear that the goods encompassed by the phrase relate closely to the primary goods and would all be classified in the same class as the primary goods.

1402.03(b)    House Marks

House marks are marks used by an entity on a wide range of goods.  Marks of this type are often used in the chemical, pharmaceutical, and food fields.  A house mark is different from a product mark that is used on a specific item or closely related items.  A product may bear both a product mark and a house mark.

Under certain limited circumstances, an applicant may apply to register a mark as a house mark.  In an application for registration of a house mark, the identification of goods may include wording such as "a house mark for...."  As with other applications, these applications must define the type of goods with sufficient particularity to permit proper classification and to enable the USPTO to make necessary determinations under §2(d) of the Trademark Act, 15 U.S.C. §1052(d).

In an application to register a mark as a house mark based on use in commerce, the applicant must demonstrate that the mark is, in fact, used as a house mark.  Therefore, the examining attorney must require that the applicant provide catalogues, or similar evidence showing broad use of the mark, to substantiate this claim. See 37 C.F.R. §2.61(b).  

An intent-to-use applicant who wishes to register a mark as a house mark must clearly indicate its intention to register the mark as a house mark during initial examination, and the circumstances must establish that the applicant’s proposed use of the mark as a house mark is credible.  The nature of the mark and the capacity of the applicant to use the mark as asserted should be considered in determining whether the claim that the mark is to be used as a house mark is credible.  If the applicant indicates such an intention, the examining attorney should advise the applicant that, upon filing of the allegation of use, the applicant will be required to provide evidence to substantiate use as a house mark.  37 C.F.R. §2.61(b). If the applicant cannot do so, the applicant will be required to amend the identification of goods to conform to the usual standards for specificity.

The USPTO will register a mark as a house mark only in the limited circumstances where the mark is actually used as a house mark.  Therefore, if an applicant seeks to register a house mark in an application under §44 or §66(a) of the Trademark Act, the examining attorney must require evidence that the mark is in fact used as a house mark.  This is not a requirement for specimens, but rather a requirement that applicant provide evidence to substantiate the claim of use as a house mark.  37 C.F.R. §2.61(b).  If the applicant cannot do so, the identification of goods must be amended to conform to the usual standards for specificity.

1402.03(c)      Marks for a "Full Line of …"

In rare circumstances, the USPTO may accept an identification of goods that refers to "a full line of" a genre of products.  To qualify for the use of such terminology, the line of products must be in one class.  The most commonly accepted situation is "a full line of clothing."  While there may be some rare exceptions, all clothing is classified in Class 25.  Another example would be pharmaceuticals, which are almost all classified in Class 5.  Therefore, as long as the specimens and/or other evidence show use of the mark on virtually all of these goods, the "full line of" language may be used.  See 37 C.F.R. §2.61(b). It may not be used in a situation such as "a full line of hand tools."  Even though Class 8 is the general class for hand tools, a number of items that might be considered hand tools are classified in other classes (e.g., a non-electric egg beater is in Class 21 but could be considered to fall within the broad category of "hand tools").

The "full line of" language may be used only in appropriate situations and the circumstances and specimens or other evidence of record must be analyzed carefully to ensure that an applicant who does not in fact use a particular mark on a sufficient number or variety of products in its line does not receive a trademark registration that could potentially bar the registration of another applicant who uses a similar mark on different products. If the goods are a "full line of pharmaceuticals," the examining attorney must require the applicant to provide evidence that it uses the mark in connection with pharmaceuticals to treat diseases or health problems in all chapters in the World Health Organization ("WHO") International Statistical Classification of Diseases and Related Health Problems. See In re Astra Merck Inc., 50 USPQ2d 1216 (TTAB 1999) (evidence of use on only three products does not justify registration of the mark for a full line of those products). See also TMEP §904.01(a).

Although the USPTO will accept "a full line of clothing" as a sufficient identification, because the applicant is committing to virtually all the goods described by the broad language and the validity of the registration depends on the applicant’s statement that it is using the mark on all the goods and the evidence of such use as a "full line," the USPTO will not accept an identification of goods as merely "clothing."  In the latter situation, the applicant must identify the items of the clothing by their common commercial name since the applicant is not likely using the mark for all items of clothing and the registration should be limited to only those items of clothing on which the applicant is actually using the mark.

In some cases, it may be more appropriate to indicate that the applicant is providing a full line of a subset of a genre of products (e.g., "a full line of sports clothing" or "a full line of anti-viral and cardiovascular pharmaceuticals").  As with any identification that refers to a full line of a genre of products, all of the products must be classifiable in one class and the specimens and/or other evidence must show use of the mark on virtually all of the relevant goods.

An intent-to-use applicant who wishes to register a mark for a full line of a genre of products must clearly indicate an intention to register the mark for a full line during initial examination, and the circumstances must establish that the applicant’s proposed use of the mark for a full line of products is credible.  The nature of the mark and the capacity of the applicant to use the mark as asserted should be considered in determining whether the claim that the mark is to be used for a full line of products is credible.  If the applicant indicates such an intention, the examining attorney should advise the applicant that, upon filing of the allegation of use, the applicant will be required to provide evidence to substantiate use for a full line of products.  37 C.F.R. §2.61(b). If the applicant cannot do so, the applicant will be required to amend the identification of goods to conform to the usual standards for specificity.

The USPTO will register a mark for a "full line of" a genre of products only in the limited circumstances where the mark is actually used as such.  If an applicant seeks to register a mark for a "full line of" a genre of products in an application under §44 or §66(a) of the Trademark Act, the examining attorney must require evidence to substantiate use for a full line of products.  This is not a requirement for specimens, but rather a requirement that applicant provide evidence to substantiate the claim of use as a mark for a "full line of" a genre of products.  37 C.F.R. §2.61(b).  For example, in the pharmaceutical context, proof of use in connection with pharmaceuticals to treat diseases or health problems in all categories in the WHO International Statistical Classification of Diseases and Related Health Problems reflects appropriate use to qualify for a "full line." If the applicant cannot establish sufficient use for a "full line of" a genre of products, the identification of goods must be amended to conform to the usual standards for specificity.  

1402.03(d)    Identifying Computer Programs with Specificity

Any identification of goods for computer programs must be sufficiently specific to permit determinations with respect to likelihood of confusion.  The purpose of requiring specificity in identifying computer programs is to avoid the issuance of unnecessary refusals of registration under 15 U.S.C. §1052(d) where the actual goods of the parties are not related and there is no conflict in the marketplace.  See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).  Due to the proliferation and degree of specialization of computer programs, broad specifications such as "computer programs in the field of medicine" or "computer programs in the field of education" will not be accepted, unless the particular function or purpose of the program in that field is indicated.  For example, "computer programs for use in cancer diagnosis" or "computer programs for use in teaching children to read" would be acceptable.

Typically, indicating only the intended users, field, or industry will not be deemed sufficiently definite to identify the nature of a computer program.  However, this does not mean that user, field, or industry indications can never be sufficient to specify the nature of the computer program adequately.  For example, "geographical information system software" would be acceptable.  Geographical information systems, also known in the industry as GIS, are well-defined computer applications that do not need further definition.  If the identification in the application does not adequately specify the nature of a computer program, further information may be requested.  Any questions concerning the recognition of a term of art for a computer program should be discussed with senior attorneys, managing attorneys, or other examining attorneys who are knowledgeable in the computer field.

If an applicant asserts that the computer programs at issue serve a wide range of diverse purposes, the applicant must submit appropriate evidence and/or specimens to substantiate such a broad identification of goods.  See 37 C.F.R. §2.61(b); TMEP §§1402.03(b)–(c).

Generally, an identification for "computer software" will be acceptable as long as both the function/purpose and the field are set forth.  Some general wording is allowed.  The following wording is acceptable:

• (1) Computer game software.
• (2) Computer operating programs and computer operating systems:  Software under this category comprises master control programs that run the computer itself.  They are the first programs loaded when the computer is turned on and set the standards for the application programs that run in the operating system or operating program.
• (3) Computer utility programs:  These programs must be designed to perform maintenance work on a computer system or components thereof, such as file management (sorting, copying, comparing, listing, and searching files), as well as diagnostic and measurement routines that check the health and performance of the computer system.  Beware of identifications that read "Computer utility programs, namely, business software." - This is NOT a utility program.
• (4) Computer software development tools:  These programs are designed to create other computer programs.  This is one of the few exceptions in which use of the term "tools" is acceptable.
• (5) Database management software [if for general use, otherwise indicate specific field]: Software that controls the organization, storage, retrieval, security, and integrity of data in a database (an electronically stored collection of data).  Other examples:
  • General purpose database management software.
  • Computer software for use in database management.
  • Database management software for use by financial advisors.
  • Database management software in the field of baseball cards.
• (6) Spreadsheet software [if for general use, otherwise indicate specific field]:  Software that simulates a paper spreadsheet, or worksheet, in which columns or individual cells of numbers are summed, subtracted, multiplied, or divided with the contents of other columns or cells for budgets and plans.  Other examples: 
  • General purpose spreadsheet software.
  • Computer software for use as a spreadsheet.
  • Spreadsheet software for use by budget analysts.
• (7) Word processing programs [if for general use, otherwise indicate specific field]: Software used to create text documents. Other examples:
  • Downloadable computer software for word processing.
  • Computer programs for word processing.
• (8) Computer aided design (CAD) software [if for general use, otherwise indicate specific field]:  Computer Aided Design software is generally used to design products.  CAD software is available for generic design or specialized uses, such as architectural, electrical, and mechanical design.  Other examples:
  • Computer aided design (CAD) software for general use.
  • Computer aided design (CAD) software used for designing integrated circuits.
  • Computer aided design (CAD) software for architectural use.
• (9) Computer aided manufacturing (CAM) software [if for general use, otherwise indicate specific field]:  Computer Aided Manufacturing software automates manufacturing systems and techniques, including numerical control, process control, robotics, and materials requirements planning.  Other examples: 
  • Computer aided manufacturing (CAM) software for general use.
  • Computer aided manufacturing (CAM) software used in the manufacture of airplane components.
  • Computer aided manufacturing (CAM) software for integrated circuits.
• (10) CAD/CAM software [if for general use, otherwise indicate specific field]:  Computer Aided Design/Computer Aided Manufacturing software integrates functions of CAD and CAM software in that products designed by the CAD systems are directly inputted into the CAM systems for manufacture.

See TMEP §1402.11(a) regarding identification and classification of computer services.

1402.03(e)    Identifying Publications with Specificity

When the goods are publications, the identification must indicate both the specific physical nature and the literary subject matter of the publication.

In the case of publications of a specialized nature, the identification should describe the goods by specific names or wording that explains their specialized nature.

Even if the mark itself indicates the subject of a publication, the identification must specify the subject matter.

As a general rule, "books" should be described by subject matter or class of purchasers (e.g., exercise books or children’s books).  In the case of a mark used by a publishing house on books, a general identification, such as "a house mark for books" or "a full line of books" is sufficient if supported by the record.  However, if the goods are restricted to certain types of literature, such as science fiction, engineering, romance, or poetry, the identification should so indicate.  The applicant may also indicate the channels of trade or groups of purchasers for the goods.

When the subject matter is not a significant aspect of a publication, such as with in-house newsletters, the identification may merely give an indication of the general character or type of the publication.

See TMEP §1402.11(a) regarding online publications.

1402.03(f)    Recognition of Industry Terms

Industry terminology should be recognized as sufficient to identify the goods or services when supported by dictionary definitions or other authoritative references. Examples of acceptable terminology are "telecommunications services, namely, personal communications services" and "telecommunications services, namely, ISDN services." If the references or evidence submitted raise any doubt as to the widespread recognition of the terminology, a brief explanation of the product or activity may be included in the identification, but the accepted industry terminology may remain part of the identification as well.

1402.04    Acceptable Identification of Goods and Services Manual

The USPTO maintains an ID Manual comprised of a listing of acceptable identifications of goods and services compiled by the Office of the Administrator for Trademark Identification, Classification and Practice.  Although entries in the ID Manual are acceptable as written, the examining attorney may require an amendment to an otherwise definite identification in certain circumstances. See, for example, TMEP §§1401.07 and 1203.02(e)(ii). The ID Manual is updated periodically, and the entries in it are more extensive and specific than the Alphabetical List under the Nice Classification that is published by WIPO.  The listing is not exhaustive, but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.

Using identification language from the ID Manual enables trademark owners to avoid objections by examining attorneys concerning indefinite identifications of goods or services; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.  Therefore, even if the identification is definite, examining attorneys may inquire as to whether the identification chosen accurately describes the applicant’s goods or services (see TMEP §1402.05 regarding accuracy of identifications).

No listing could include all possible identifications for the multitude of products and services for which marks may be registered.  Therefore, a primary use of the ID Manual’s listings, in addition to indicating precise identifications that will be accepted, is to indicate by analogy and example the kinds of identifications that will be acceptable for products and services not covered by the existing listings.

Any identification of goods and services in the ID Manual that has a letter "T" in the Trilateral column indicates that the identification is acceptable in the USPTO, the Japanese Patent Office ("JPO"), the European Trademark Office ("OHIM," the Office of Harmonization in the Internal Market), the Korean Intellectual Property Office ("KIPO"), and the State Administration for Industry and Commerce ("SAIC") of the People’s Republic of China.

In a TEAS Plus application, the application must include correctly classified goods and/or services, with an identification of goods and/or services taken directly from the USPTO ID Manual, available through the TEAS Plus form.  37 C.F.R. §2.22(a)(8); TMEP §819.01(g). In a TEAS or TEAS RF application, the applicant may include correctly classified goods and/or services taken from the ID Manual or may create and enter a listing of recognizable goods and/or services. See TMEP §805 regarding listing particular goods or services in an application and designation of international class number(s) and TMEP §1402.02 regarding entitlement to a filing date with respect to the identification of goods and services.

The ID Manual can be viewed and downloaded free of charge from the USPTO website at http://www.uspto.gov, and it is accessible from within TEAS.

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. 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.

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.

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.

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.

1402.06    Amendments Permitted to Clarify or Limit Identification

Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, "The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services . . . ."  This rule applies to all applications.

Section 7(c) of the Trademark Act, 15 U.S.C. §1057(c), provides that filing an application for registration on the Principal Register establishes constructive use and nationwide priority, contingent on issuance of the registration (see TMEP §201.02).  Therefore, the identification of goods and/or services in an application defines the scope of those rights established by the filing of an application for registration on the Principal Register.

1402.06(a)    Limiting the Identification of Goods and Services

As noted above, the rules permit amendments to limit the identification of goods and services.

Deletions from the identification of goods and services are also permitted.  "Deletion" means the elimination of an existing item in an identification of goods and services in its entirety.  If the applicant wishes to amend the identification of goods and services to delete one or more items, the examining attorney should accept the amendment, if it is timely and otherwise proper.  However, once the applicant has expressly amended the identification of goods and services to delete an item, it may not be reinserted in a later amendment.

If the applicant wishes to amend the identification of goods and services to restrict one or more of the items by inserting qualifying language within the scope of the identification or substituting more specific language, the examining attorney should accept the amendment, if it is timely and otherwise proper.  Qualifying language, however, may not be deleted from an identification.

If an applicant wishes to amend the identification of goods and services to insert an item that is equivalent to or logically encompassed by an item already included in the identification of goods and services, the examining attorney should permit the amendment, if it is timely and otherwise proper.

On the other hand, an applicant may not amend an identification of goods/services to add or substitute a term that is not logically included within the scope, or to add exclusionary language that falls outside the scope, of the terms originally identified or that is otherwise qualitatively different from the goods and services as originally identified.

The scope of the goods and services, as originally identified or as amended by an express amendment, establishes the outer limit for any later amendments.  See TMEP §1402.07.

Under 37 C.F.R. §2.71(a), there is no general prohibition against specific types of limitations in identifications of goods and services, such as the use of negatives, exceptions, or similar language.  Limitations on identifications phrased in the negative or as exceptions are acceptable, if they are otherwise proper.

Because 37 C.F.R. §2.71(a) precludes additions that broaden the identification, examining attorneys should not require or suggest unduly restrictive identifications.  See In re Sentry Chem. Co., 230 USPQ 556 (TTAB 1986).  Once the identification has been limited, it cannot be expanded later.  See In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); In re M.V Et Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991).  Also, when requiring amendments to the identification, examining attorneys must advise applicants that additions that broaden the identification are not permitted.

1402.06(b)    Clarifying the Identification of Goods and Services

Under 37 C.F.R. §2.71(a), an applicant may amend "to clarify" the identification of goods and/or services.  The applicant may clarify an identification that is indefinite or overly broad, to identify goods and/or services that are within the scope of the goods and services in the identification.  As noted in TMEP §1402.06, filing an application for registration on the Principal Register establishes a constructive date of first use in commerce, contingent on issuance of the registration.  15 U.S.C. §1057(c).  Accordingly, the applicant may not expand those rights through an amendment that broadens the identification of goods and/or services.

Thus, the applicant may amend from the more general to the specific, but the applicant may not amend from the specific to the more general.  The scope of the goods/services identified initially, or as limited by an express amendment, establishes the outer limit for permissible amendments.  See TMEP §§1402.07 et seq.

In an application under §1 or §44 of the Trademark Act, classification may provide some guidance in determining whether an amendment exceeds the scope of the goods/services identified initially, but it is not controlling.  In an application under §1 or §44, the examining attorney may suggest and accept amendments to the identification that result in a change of class, if the amended identification does not exceed the scope of the original identification.

In a §66(a) application, classification is assigned by the IB and may not be changed.  37 C.F.R. §2.85(d).  See TMEP §§1401.03(d), 1402.01(c), and 1904.02(b) and (c) regarding §66(a) applications.

1402.07    Scope of Identification of Goods and Services for Purposes of Amendment

1402.07(a)    The "Ordinary-Meaning" Test

In applications under §1 or §44, for the purpose of determining the scope of an identification, the examining attorney should consider the ordinary meaning of the wording apart from the class number designation.  The class number (see TMEP §§1401.03 et seq.), whether inserted by the applicant or the USPTO, does not limit the scope of permissible amendments.  37 C.F.R. §2.85(f).  If the applicant designates the class by number, this information may be weighed with other factors for the benefit of the applicant in determining the scope of permissible amendments.

However, if the applicant does not merely designate the class number, but expressly limits the goods or services recited to those that are within one or more classes, the applicant may not amend to specify items not in those classes.

In many cases, the identification is merely a repetition of the entire general class heading for a given class.  However, use of the words comprising a class heading as an identification of goods or services in an application filed with the USPTO or in a request for extension of protection notified under the Madrid Protocol is not deemed to include all the goods or services in the established scope of that class. In re Fiat Grp. Mktg. & Corporate Commc'ns S.p.A., 109 USPQ2d 1593, 1598 (TTAB 2014). In this situation, the USPTO will look to the ordinary meaning of the words for the purposes of determining the scope of the identification.  The USPTO will not permit the applicant to amend to include any item that falls in the class, unless the item falls within the ordinary meaning of the words in the heading, or to amend to items in other classes.  Id. at 1597 (finding that the wording from the class heading, "business management services," refers to services that are significantly different from and do not include "retail store services"). As noted in TMEP §1402.01(b), class headings are generally unacceptable to identify goods/services in United States applications, even if the class heading is used as the identification in the foreign registration.

In §66(a) applications, the classification assigned by the IB cannot be changed, so the scope of the identification for purposes of permissible amendments is limited by the class.  37 C.F.R. §2.85(f).  See TMEP §§1401.03(d), 1402.01(c), and 1904.02(c).

1402.07(b)    Ambiguous Identifications

An applicant may amend an ambiguous identification of goods or services (i.e., an identification that fails to indicate a type of goods or services) in order to specify definite goods or services within the scope of the indefinite terminology.

Likewise, if the applicant includes wording in an indefinite identification of goods or services that, in context, is obviously superfluous, the applicant may amend the identification to specify goods or services within the scope of the indefinite terminology.  In many cases, the superfluous wording will not restrict the range of permissible amendments.

The policy permitting applicants to amend to specify either goods or services should be construed narrowly.  The applicant should only be permitted to amend from goods to services, or vice versa, when the existing identification of goods and services fails to specify a definite type of goods or services and when the existing identification provides reasonable notice to third parties that the applicant may be providing either goods or services within the scope of the existing identification.

1402.07(c)    Unambiguous Identifications

An applicant may amend an unambiguous identification of goods that indicates a specific type of goods to specify definite and acceptable identifications of goods within the scope of the existing terminology.

An applicant may amend an unambiguous identification of services that indicates a specific type of service to specify definite and acceptable identifications of services within the scope of the existing terminology.

An applicant may not amend a definite identification of goods to specify services, or vice versa, except that if the goods are of a type that are available in more than one medium, and the applicant does not specify the medium in the identification of goods, the applicant will be allowed to amend to any medium, even if one of the mediums is classified as a service.

1402.07(d)    Permissible Scope of Identification Not Affected by Proposed Amendment That Is Unacceptable

If the applicant proposes an amendment to the identification of goods and services, and the examining attorney determines that the amendment is unacceptable, the examining attorney should refer to the identification of goods before the proposed amendment to determine whether any later amendment is within the scope of the identification.  In such a case, the applicant is not bound by the scope of the language in the proposed amendment but, rather, by the language of the identification before the proposed amendment.

If the applicant submits an amendment to the identification of goods and services, and the examining attorney determines that it is unacceptable, in whole or in part, the examining attorney must advise the applicant of the item or items that are unacceptable.  For those items which are unacceptable, 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.  If portions of an amended identification are accepted, those items may not be further amended to exceed the scope of the accepted amendment.  See TMEP §1402.07(e).

If the applicant submitted the amendment in response to a requirement, the examining attorney must issue a final requirement for amendment of the identification, if the proposed amendment raises no new issues and the application is otherwise in condition for a final action.  See TMEP §714.05(a)(ii).

1402.07(e)    Permissible Scope of Identification Affected by Proposed Amendment That Is Acceptable

Once an applicant amends the identification of goods and/or services in a manner that is acceptable to the examining attorney, the amendment replaces all previous identifications and restricts the scope of the goods and/or services to that of the amended language. Further amendments that would add to or expand the scope of the recited goods or services, as amended, will not be permitted.  37 C.F.R. §2.71(a); In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); In re M.V Et Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991).  This includes amendments to the identification submitted in an amendment to allege use, a statement of use, or a request for an extension of time to file a statement of use.See 37 C.F.R. §§2.71(a), 2.88(b)(1)(iv), 2.89(f). See TMEP §1104.10(b)(iii) regarding submission of a response to Office action and amendment to allege use that contain different amendments to the identification of goods and/or services, TMEP §1108.02(d) regarding identifying the goods and/or services in a request for an extension of time to file a statement of use, and TMEP §1109.13 regarding identifying the goods and/or services in a statement of use.

The only circumstance in which the applicant may reinsert goods or services that were omitted or deleted from the identification of goods or services is when before publication or within six months of the issuance of an examiner’s amendment (see TMEP §§707-707.03), whichever is earlier, the applicant objects to an amendment of the identification of goods and/or services in the examiner’s amendment on the ground that the examiner’s amendment does not reflect the agreement between the applicant and the examining attorney.

1402.08    Moving Goods and Services Between Companion Applications

If an applicant has filed separate applications to register the same mark, the applicant may, in a limited situation, amend to move items of goods or services from one application to another, if the application from which the item is to be moved was filed on or before the filing date of the application to which it is to be moved. Such an amendment will be permitted only if some of the goods/services in one application should be classified in a different class and the companion application includes that class. If the companion application does not include that class, the proper recourse is for the applicant to file a request to divide. See TMEP §§1110-1110.11(a). 

Moving goods/services between applications in this way may only be done if neither of the marks involved has been approved for publication in the Official Gazette.  Moreover, items of goods/services can be moved between applications only in applications filed under §1 or §44 of the Trademark Act.  The applicant cannot amend to move items of goods/services to or from a §66(a) application.

The applicant must file a separate amendment for each application, that is, a request to delete specified goods/services in the application from which they are to be moved, specifying the serial number of the application to which they should be added, and an amendment in the application to which those goods/services are to be added, specifying the serial number of the application from which they are to be moved. The examining attorney(s) must ensure that the USPTO automated records are updated to reflect the changes in both applications.

An applicant may file a request to move all the goods/services from one application to another, if the applicant meets the requirements set forth above.  The USPTO will construe such a request as a request to expressly abandon the application from which the goods/services are moved.  If the request to move all the goods/services is granted, and no goods or services remain in the application from which the goods/services are moved, the USPTO will abandon the application.  The USPTO will not refund the application filing fee.  See TMEP §718.01 regarding express abandonment.

1402.09    Use of Marks or Terms "Applicant" and "Registrant" Inappropriate in Identifications

If a mark that is registered to an entity other than the applicant is used in the identification of goods or services, the examining attorney must require that it be deleted and that generic wording be substituted.  It is inappropriate to use a registered mark to identify a kind of product or a service, because such a mark indicates origin in only one party and cannot be used to define goods that originate in a party other than the registrant.  Camloc Fastener Corp. v. Grant, 119 USPQ 264, 265 n.1 (TTAB 1958).  In place of the mark, a generic term must be used.

Generally, an applicant should not use its own registered or unregistered mark in an identification of goods or services in its own application.  If the applicant chooses to do so, however, the applicant should be careful to use the mark as an adjective modifying the generic name of the goods or services.  In addition, the words "applicant" or "registrant" must not appear in the identification of goods or services.  Before registration, use of the term "registrant" is inaccurate, and, after registration, use of the term "applicant" is inaccurate.

If the examining attorney issues a nonfinal action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite but is unacceptable because it includes a registered mark, this is not considered a new issue, and the examining attorney must issue a final requirement for amendment of the identification.  However, if the examining attorney issues a final action requiring amendment of the identification because it is indefinite, and the applicant responds with an amended identification that is definite but includes a registered mark, the examining attorney should treat the response as incomplete, and grant the applicant additional time to cure this deficiency, pursuant to 37 C.F.R. §2.65(a)(2).  See TMEP §718.03(b) for further information about granting an applicant additional time to perfect an incomplete response.  Examining attorneys are encouraged to try to resolve this issue by examiner’s amendment.

1402.10    Identification of Goods and Services in Documents Filed in Connection with §1(b) Applications

See TMEP §1104.10(b)(iii) regarding examination of the identification of goods or services in an amendment to allege use; TMEP §1108.02(d) regarding the identification of goods or services in a request for an extension of time to file a statement of use; and TMEP §1109.13 regarding examination of the identification of goods or services in a statement of use.

1402.11    Identification of Services

This section addresses identifications of particular types of services.

The primary major requirements for an acceptable identification of services are:  (1) the identification must be definite; (2) it must use the common name or terminology for the services, so as to be readily understandable; (3) it must accurately describe the services; and (4) it must constitute a service as contemplated by the Trademark Act, and not merely refer to collateral or related activities associated with rendering the service. See TMEP §§1301.01-1301.01(b)(v) for information on what constitutes a service.

Generally, the identification of a service should not emphasize the method or manner by which the service is provided.  However, in some circumstances, it may be helpful to include such information in a trailing phrase.

Fashion-show services are generally classified either as promotional services rendered by the organizer of the fashion show to the businesses or groups that sponsor the event or as an entertainment service.  When the record shows that the primary purpose of conducting such a fashion show is to promote the sale of goods or services of the sponsors, the service should be recited as "promoting the goods or services of others by means of a fashion show" or "fashion show exhibitions for commercial purposes" in Class 35.  Where the fashion show is presented primarily as entertainment for the general public, the service should be identified as "entertainment in the nature of fashion shows" in Class 41.

The activities recited in the identification must constitute services as contemplated by the Trademark Act.  See TMEP §§1301.01 et seq. as to what constitutes a registrable service.  For example, "sales" cannot be listed as the primary activity in an identification, because the sale of one’s own goods or services is not a registrable service.

See also TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.

1402.11(a)    Computer Services

1402.11(a)(i)    Services Classified in Classes 35, 36, 37, 39, 40, 41, 44, and 45

Any activity consisting of a service that ordinarily falls in these classes (e.g., real estate agency services, banking services, dating services), and that happens to be provided over the Internet, is classified in the class where the underlying service is classified.  For example, banking services are classified in Class 36 whether provided in a bank or online.

The following are examples of some acceptable identifications:

• "Internet advertising services in Class 35."
• "Online banking services in Class 36."
• "Online cosmetic skincare consultation services in Class 44."
• "Internet-based dating, social introduction and social networking services in Class 45."

1402.11(a)(ii)    Content Providers

The term "content provider" is generally used to indicate a person or entity that provides information or entertainment content for use on the internet or electronic media. Content-provider services may be classified in a variety of classes depending upon the nature of the activity provided. Thus, the activity provided must be specified in the identification. As discussed below, the subject matter of the services may also be required for appropriate classification.

Information Provider Services

The service of providing information via the Internet is classified in the class of the information subject.  Entities that provide these services by computer are considered to be "content providers," that is, they provide the informational or substantive content of a website and/or home page.  If an entity provides information in a wide variety of fields, the applicant must select the subject matter to be protected and classify the services accordingly (e.g., business information in Class 35, banking information in Class 36, home repair information in Class 37).  See TMEP §1402.11(b) regarding information services.

Some acceptable identifications:

• "Providing business information via a website in Class 35."
• "Providing a website featuring information in the field of banking, in Class 36."  This is purely an information provision service and should be treated accordingly.  The website is the means and not itself a classifiable service.
• "Providing real-time information concerning vehicle parking space availability, in Class 39."

Audiovisual Content

Content-provider services involving the provision of online, non-downloadable videos are classified in Class 41 regardless of the subject matter of the videos. The subject matter of the videos must also be included in the identification to assist in likelihood of confusion determinations under 15 U.S.C. §1052(d). For additional information on identifying and classifying computer entertainment services, see TMEP § 1402.11(a)(vii).

Other Services Offered by Content Providers

Businesses and individuals commonly provide content services in addition to other types of services. For example, Internet Service Providers (ISPs) often provide online content as well as Class 38 internet access services. For information about identifying telecommunications services provided by ISPs, see TMEP § 1402.11(a)(iii). Online audiovisual content providers may similarly offer both video-streaming services in Class 38 and online non-downloadable videos in Class 41. Content providers also may provide a variety of technological services, such as website hosting, in Class 42. Each service on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce should be set forth in the application. 15 U.S.C. §§1051(a)(2) and 1051(b)(2); 37 C.F.R. §2.32(a)(6). For multiple-class application requirements, see TMEP §1403.01.

1402.11(a)(iii)    Provision of Telecommunications Connections to the Internet

Telecommunication connections, such as those provided by AT&T® and Verizon®, are the wired, or wireless, electronic means by which one telecommunications-enabled device, such as a telephone, smartphone, or computer, communicates with another telecommunications-enabled device.  The Class 38 activities of a telecommunications connection provider do NOT include providing the computer hardware or software that enables the electronic transmission of the data. These telecommunications services connect the user’s device to the internet via wired or wireless means.

Just because an applicant is conducting an internet-based activity or rendering a service that involves electronic transmission of data, the applicant’s service is not automatically considered a telecommunications service in Class 38.  For example, an applicant who merely provides a website featuring sports information is not providing "electronic transmission of messages and data in the field of sports," in Class 38.  The telecommunications services providers, such as AT&T® and Verizon®, are providing the Internet connections for the actual transmissions; the applicant is merely making the information available.

"Online bulletin boards" and "chat rooms" are classified in Class 38 regardless of the content or subject matter.  The rationale for this stems from the fact that these services allow individuals to communicate with each other, like other Class 38 services.

"Providing multiple-user access to the Internet," is classified in Class 38.  Note:  This identification covers those services provided by Internet Service Providers ("ISPs"), such as Cox®, AOL®, Comcast®, Verizon®, and AT&T®.  ISPs provide the computer connection (often using the Class 38 telecommunications services of other entities) that enables a computer user to access the databases and websites of others via the Internet.  These entities are considered "access providers" in that they provide the computer connection needed for a computer user to access a content provider.  The word "access" should be limited to these services and should not be used in describing the services of a content provider.

Some acceptable identifications:

• "Providing telecommunications connections to the Internet or databases, in Class 38."
• "Electronic mail services, in International Class 38."
• "Broadcasting of video and audio programs over the Internet, in Class 38."
• "Webcasting services, in Class 38."
• "Web conferencing services, in Class 38."
• "Providing online chat rooms for transmission of messages among computer users concerning topics of interest to teens in Class 38."
• "Providing multiple-user access to the Internet in Class 38."  Many ISPs have expanded their services to encompass content-based services for their subscribers.  The "providing multiple-user access" identification only covers the ISP services.  If the applicant wishes to protect its "content-based" services, it must identify those services with specificity and pay any additional fees, as appropriate. For information on identifying and classifying content-provider services, see TMEP § 1402.11(a)(ii).

1402.11(a)(iv)    Office-Function-Type and Computerized Web Traffic Services

These services are essentially office function services (e.g., filing and record keeping) that happen to be conducted with the use of a computer:

• "Data processing services, in Class 35."
• "Computer data entry services, in Class 35."
• "Systemization of data in computer databases, in Class 35."

Computerized web services include website-focused activities the primary function of which is to promote, advertise or market the websites of others by improving a website’s visibility in search engine results.

• "Website traffic optimization, in Class 35."
• "Consulting services in the field of search engine optimization, in Class 35."
• "Promoting the goods and services of others through search engine referral traffic analysis and reporting, in Class 35."

1402.11(a)(v)    Computer Installation and Repair Services

As set forth in the Nice Alphabetical List, installation, maintenance, and repair of computer hardware are in Class 37, while installation, maintenance, and updating of computer software are activities in Class 42. Therefore, for classification purposes, the applicant must distinguish between computer hardware and computer software.  For example: 

• "Installation, maintenance, and repair of computer hardware systems, in Class 37."
• "Installation, maintenance, and updating of computer software systems, in Class 42."

If the installation and maintenance services refer to networking hardware, the service should be classified in Class 37.  For example: 

"Installation, maintenance, and repair of Ethernet and wireless networking hardware, in Class 37."

If the applicant applies for "technical support services," the examining attorney will require the applicant to further specify the nature of the services. Technical support services may include services classified in more than one class, including the following: 

• "Installation and maintenance services in either Class 37 or 42 (depending on whether the subject matter is hardware or software);"
• "Technical support services, namely, repair of computer hardware, in Class 37;"
• "Technical support services, namely, providing technical advice related to the manufacture of {indicate goods being manufactured}, in Class 40;"
• "Technical support services, namely, troubleshooting of computer software problems, in Class 42;" and
• "Technical support services, namely, diagnosis of computer hardware and software problems in Class 42."

1402.11(a)(vi)    Computer Retail Services

Retail store, catalog, and ordering services are classified in Class 35 no matter how the services are conducted.  Any of the following identifications is acceptable: 

• "Computerized online retail store services in the field of {indicate field of goods}, in Class 35."
• "Computerized on-line ordering services in the field of {indicate field of goods}, in Class 35."
• "Providing a website used to place online commercial orders in the field of {indicate field of goods}, in Class 35."

Other types of retail services, including marketing, advertising, and promotion, are also classified in Class 35 regardless of how the services are conducted. For example:

• "Marketing, advertising, and promoting the retail goods and services of others through wireless electronic devices, in Class 35."

1402.11(a)(vii)    Computer Entertainment Services

Generally, entertainment services are classified in Class 41.  However, the type of entertainment activity the applicant is conducting must be specified.  Therefore, the wording "providing a website featuring entertainment" is not acceptable.  Instead, one of the following may be appropriate: 

If the services comprise an "online game:"

• "Entertainment services, namely, providing a multiple-user online computer game, in Class 41."
• "Providing a computer game that may be accessed network-wide by network users, in Class 41."

If the services involve "chat rooms:"  "Providing online chat rooms for transmission of messages among computer users concerning {indicate field or subject of chat room}, in Class 38."

If the services involve providing information:  "Providing information in the field of computer gaming entertainment via a website, in Class 41."  See TMEP §1402.11(b).

If the services involve providing non-downloadable videos: "Providing a website featuring non-downloadable videos in the field of {indicate field or subject matter of videos}, in Class 41."

If the services involve providing a website from which a user can receive "webcasted" transmissions over the Internet:  "Broadcasting {indicate radio programs, television programs, multimedia programs, etc.} via the Internet, in Class 38."

If the services consist of providing a particular online show "webcasted" over the Internet:  "Entertainment, namely a continuing {indicate type, e.g., variety, news, comedy} show broadcasted over the Internet, in Class 41."

1402.11(a)(viii)    Computer Design and Development Services

Generally, these services are in Class 42.  It is important to remember that these services must be performed for the benefit of others.  If an applicant is developing its own software, it is not engaging in a recognized service.  (See TMEP §§1301.01 et seq. regarding activities that do not constitute services.)  If the services are identified as "computer design and development services," the specimens must show that the applicant provides these services for other parties.  Some acceptable identifications are: 

• "Computer software design and development services for others, in Class 42."
• "Computer services, namely, creating and maintaining websites for others, in Class 42."
• "Duplication of computer programs, in Class 42."

1402.11(a)(ix)    Database Services

Prior to January 1, 2002, the service of providing an online database via the Internet was classified in Class 42 if the database included a wide variety of subject matter.  However, effective January 1, 2002, the subject matter or content of the online database now governs the classification of the services.  Applicants must now separate the subject matter or content of the databases into their appropriate individual international classes.  Acceptable identifications include:

• "Providing an online electronic database on the Internet in the field of business evaluations of automobile companies, in Class 35."
• "Providing an online electronic database on the Internet in the field of banking, in Class 36."
• "Providing an online electronic database on the Internet in the field of computer programming, in Class 42."
• "Providing an online electronic database on the Internet in the field of cosmetology, in Class 44."

In determining whether the specimens support "database provision services," look for the following clues:

• See if the specimens use words like "to access our database," "our database includes…," etc.
• Confirm that the information provided online is capable of being searched, sorted, re-arranged, and indexed like a traditional database.
• If the specimens consist of merely a series of web pages, this is NOT a database.  A more appropriate identification would be "providing a website on the Internet featuring information in the fields of ________, in Class ___ (class dependent on the content)."

Other common database services include the following:

• "Database development services, in Class 42."
• "Computerized database management services, in Class 35."

See TMEP §1402.11(b) regarding information services.

1402.11(a)(x)    Online Publications

All online publications are classified in Class 41 no matter what the subject matter.  An acceptable identification would be:

"Computer services, namely providing online {indicate specific nature of publications, e.g., magazines, newsletters, etc.} in the field of {indicate subject matter of publication}, in Class 41."

A column or section of an online publication would be identified as "computer services, namely, providing a {indicate column or section} in an online {indicate type of publication} in the field of {indicate subject matter of publication}," in Class 41.

The examining attorney should verify from the specimens that the information is presented in a "publication" format.  An online magazine in Class 41 must really look like and have the attributes of a magazine, i.e., contain monthly or periodic articles, sections, features, advertisements, credits, etc.  If it does not, a more appropriate identification would be "providing a website on the Internet featuring information in the field of ________, in Class ___" (classification dependent on the content).

If an applicant identifies its goods as "publications, namely ...," and it becomes apparent during examination that the goods are in fact online publications, the applicant may amend the identification to indicate that the goods are online publications in Class 41, since the term "publications" is broad enough to encompass both printed and online publications.  On the other hand, if the applicant identifies its goods as "printed publications...," the identification cannot be amended to indicate that the goods are "online publications," because this would exceed the scope of the original identification.  See 37 C.F.R. §2.71(a).

1402.11(a)(xi)    Electronic Storage, Hosting of Data, and Cloud Computing

Electronic storage of data for others is considered a computer technology service as it requires the provision of technological means to conduct the activity and is classified in Class 42 as of the 10th edition, 2014 version of the Nice Classification system. Hosting of computer websites and other data, including software as a service, is also a computer technology service when conducted for third parties. The storage or hosting of one’s own data is not considered a service within the meaning of the Trademark Act. Some acceptable identifications are:

• "Electronic data storage, in Class 42."
• "Electronic storage of documents and archived e-mails, in Class 42."
• "Hosting of digital content on the Internet, in Class 42."
• "Website hosting services, in Class 42."

Cloud computing comprises a variety of Class 42 activities that must be further specified for purposes of examination on the basis of likelihood of confusion under §2(d), 15 U.S.C. §1052(d). Some acceptable identifications are:

• "Computer services, namely cloud hosting provider services, in Class 42."
• "Providing virtual computer systems and virtual computer environments through cloud computing, in Class 42."
• "Cloud computing featuring software for use {specify function and, if content- or field-specific, the field of use}, in Class 42."

1402.11(b)    Information Services

Prior to January 1, 2002, the identification "providing information in a wide variety of fields" was an acceptable identification of services, particularly in the context of Internet websites.  The only caveat being that the website or information services did provide information in a wide variety of fields.

Effective January 1, 2002, the "miscellaneous" phrase has been eliminated from the heading of Class 42 (see TMEP §1401.09(a)).  Therefore, the examining attorney must require that the applicant indicate the fields in which it is providing information so that the service can be accurately classified.  The fields may be listed somewhat broadly, but with enough specificity to allow classification.  "Bundling" of the fields of information (that is, listing all fields of information but allowing the dominant or most significant field to control the classification with the other fields simply "along for the ride") is no longer acceptable.

Since information services must now be classified according to the subject matter of the information, the nature or subject matter of the information provided must be specified to allow for proper classification.  For example, "information in the field of automobiles" is not sufficiently definite to allow for proper classification.  If the information pertains to purchasing an automobile, then the service is classified in Class 35.  If the information pertains to the care and maintenance of automobiles, the service is classified in Class 37.  If the service involves insurance or financing of automobiles, then Class 36 is the proper class.  The best way to ensure that the information is classified correctly may be to identify the subject matter of the service.  For example, "information in the field of automobile financing" is adequate to classify the service in Class 36.  Another way to clarify the classification of information services is to characterize the information itself.  Thus, "providing financing information in the field of automobiles" clearly puts the service in Class 36.  As with many other service identifications that require an indication of the subject matter or field, the subject matter or field does not have to be as specific as would be required if the subject matter or field were the service itself.  However, an indication of the nature of the information must be included, either by reference to the type of information or the subject matter of the information provided, to allow for proper classification of the activity.

An applicant is not required to register in all classes in which it provides information, but may instead choose to register only the classes of the fields that are most important to it.  The examining attorney will ask the applicant to indicate the fields of information to assist in classification.  The applicant must decide if it wishes to:  (1) go forward and register the information services in all of the appropriate classes; or (2) choose the class(es) that are most important to its business, and amend the identification to delete reference to fields of information that fall into other classes.  See TMEP §1401.04(b).

1402.11(c)    Association Services and "Promoting the Interest of" Services

The classification of services rendered by associations was affected by the reorganization of Class 42 (see TMEP §§1401.09 et seq.).  Prior to January 1, 2002, the Explanatory Notes regarding this topic for the old Class 42 included the language "services (not included in other classes) rendered by associations to their own members."  This language in the old Class 42 allowed identifications of services such as "association services, namely, promoting the interest of lawyers" to be accepted in Class 42.  Effective January 1, 2002, there is no reference to "services rendered by an association" in the Class Heading or Explanatory Notes for any of the service classes.

Most activities rendered by associations are easily classified in other classes, e.g., business services (Class 35), insurance services (Class 36), travel arrangements (Class 39), training and entertainment (Class 41).

Effective January 1, 2002, under U.S. ID policy, lobbying services and activities related or similar to lobbying activities provided by an association are classified in Class 35, because they further the business interests of the group represented by the association.  Even non-business interests such as those that promote reading skills or environmental protection have a "business interest" in promoting their concerns.

1402.11(d)    Charitable Services, Other than Monetary

Prior to January 1, 2002, non-monetary charitable services were classified in Class 42, regardless of the type of service being provided by the charity.  Effective January 1, 2002, services are classified by the nature of the service provided, e.g., "charitable services, namely, providing shelter for the homeless" are in Class 43, like other temporary accommodation services; "charitable services, namely, providing tutoring for underprivileged students" are classified in Class 41, like other educational services.  See TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.

1402.11(e)    Consulting Services

Prior to January 1, 2002, all consulting services were classified in Class 42 except those relating to business (Class 35) and financial or insurance (Class 36).  Effective January 1, 2002, consulting services are classified in the class of the subject matter of the service.  This includes technical consulting services.  Technical consulting is like any other consultation service, although it focuses primarily on how things work.  Thus, the type of consultation or subject matter of the consultation must be set forth with adequate specificity to allow for accurate classification.  It should be noted that "technology consulting" is in Class 42 because it encompasses consulting about the technology aspects of the subject matter given.

Some Acceptable Identifications:

• "Consulting in the field of telecommunication services, namely, transmission of voice, data, and documents via telecommunications networks, in Class 38."
• "Consulting in the field of telecommunications technology, in Class 42."
• "Consulting in the field of maintenance and repair of telecommunications network hardware, apparatus, and instruments, in Class 37."
• "Consulting in the field of environmental protection, namely, detection of contaminants in water, in Class 42."
• "Technical consulting related to the installation of oil and gas equipment, control systems, and machinery, in Class 37."
• "Technical consulting related to the manufacturing of oil and gas equipment, control systems, and machinery, in Class 40."
• Technical consulting in the field of environmental science, in Class 42."

See TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.

1402.11(f)    Distribution of Videotapes, Audiotapes, Videodiscs, and Similar Items

The services of production and distribution of motion pictures and television programs are classified in Class 41.  This service involves the actual creation of the motion picture or television program and the accompanying activity of distributing it to movie theatres and television stations for display to the public.  In this service, the ownership of the physical product does not leave the producer.  The movie theatre or television stations "lease" (in a sense) the film or tape for a period of time and then return it to the producer.  This is not the case when distribution relates to videotapes, audiotapes, or other hard goods that result from the production of visual or audio entertainment.  When these goods are distributed, it is the same as the distribution of any other kind of hard goods by any other manufacturer.  The ownership of the physical product is transferred to the purchaser just as it is with clothing, toys, food products, or computers.  For this reason, the identification "distribution of videotapes, audiotapes, and videodiscs," should not be accepted as a service even when the distribution is linked to the production of these goods.  The production of the entertainment product is perfectly acceptable in Class 41; however, the distribution of the hard goods that result from that production is not a service in that class.  It is possible that such distribution could be considered a distributorship service in Class 35, but that must be determined on a case-by-case basis.  Distribution of one‘s own goods is not a service; it is merely a necessary part of doing business.  However, if the applicant distributes the videotapes, audiotapes, etc. of others as well as those it has produced, it may be identified as a distributorship service in Class 35.

See TMEP §§1301.01 et seq. regarding the criteria for determining whether an activity constitutes a service.

1402.11(g)      Recorded Entertainment Services

For entertainment services such as those rendered by a musical group, the performance must be live.  The recording of a live concert or studio performance is not considered a service of the performing group.  Similarly, performances for the sole purpose of recording are not considered services.  The production by another entity of a performance by a musical group for recordation would be a service, but an identification such as "live and recorded performances by a musical group" could not be accepted as a valid service identification unless the words "and recorded" were deleted.

Recorded entertainment usually takes the form of goods in Class 9, such as videotapes, audio cassettes, DVDs, CD-ROMs, etc.  This is consistent with the treatment of "distribution" of these products as goods and not services as discussed in §1402.11(f).

See TMEP §§1301.01 et seq. regarding the criteria for determining whether an activity constitutes a service.

1402.11(h)    Identification of "Bonus Programs"

Many businesses offer "bonus programs" or "frequent patron programs" to encourage patronage of that business.  However, promotion of one’s own goods or services is not considered a service under the Trademark Act since the beneficiary of such an activity is the business itself and not a third party.  See TMEP §1301.01(b)(i).  These special programs do confer some benefit to the customers who participate in the program, but this benefit flows directly from use of the trademark owner’s goods or services.  Thus, a frequent flyer program provided by an airline to encourage use of its own air transportation services would be identified as "air transportation services featuring a frequent flyer bonus program" and it would be classified in Class 39.  Similarly, a retail store that has a program through which patrons earn points that result in discounts on future purchases at that store would be identified as "retail store services in the field of [indicate field] featuring a frequent patron program in which points are accumulated to be used for discounts on future purchases."  This service would be in Class 35 because it is primarily a retail store service.  It should be noted that organizing and conducting a program of this type for a third party is a promotion/advertising service and would be classified in Class 35 and identified with language such as "promoting the goods and services of others by means of a point accumulation program with points used for discounts on future purchases of those goods and services" (or whatever the details of the program may be).

1402.11(i)    Marketing Services and Advertising Services

Effective January 1, 2012, "Marketing" was added to the Nice Alphabetical List. See TMEP §1401.11(e). As with "Advertising services," the entry is listed in the ID Manual as "Marketing services" to emphasize that the activity is a service (i.e., an activity done for the benefit of others) and to make clear that use of both terms is preferred.

However, if upon consideration of the entire application, including the specimen of use, other wording in the identification or other information in the application, the Examining Attorney determines that an applicant is actually promoting its own goods and/or services, a refusal may be issued on the basis that the record fails to identify a registrable service as contemplated by the Trademark Act. See TMEP §§904.07(b), 1301.01-1301.01(b)(v). Further, the unambiguous wording "marketing of {specify goods}" may not be clarified to identify only goods. For example, amendment of "marketing of shirts" to "shirts" would be beyond the scope of the original, acceptably definite identification.

1402.11(j)    Issuing Awards

Services that involve the issuance of awards are usually classified in Classes 35 and 41.  Classification depends upon the purpose of the award program.  If the award program is an employee incentive rewarding excellence in job-related performance that actually furthers the business of an employer (e.g., safety, quality, productivity, customer service), then the service is classified in Class 35.  If the award program is to recognize excellence or achievement that may or may not be related to the participants’ business or professional endeavors (e.g., achievements in community service, excellence in country music performance), then the service should be classified in Class 41.  The distinction is that Class 35 award programs do further the business interests of an employer by encouraging positive business-related performance, while Class 41 award programs reward excellence for endeavors that do not further the business interests of an employer.

1402.12    Parentheses and Brackets Should Not be Used in Identifications of Goods and Services

Generally, parentheses and brackets should not be used in identifications of goods and services.  The Post Registration Section of the USPTO uses single brackets to indicate that goods/services have been deleted from a registration either by amendment under 15 U.S.C. §1057, filing of a partial affidavit of continued use under 15 U.S.C. §1058 or 15 U.S.C. §1141k, or filing of a partial renewal application under 15 U.S.C. §1059.  The Post Registration Section also uses double parentheses to indicate that certain goods or services are not claimed in an affidavit of incontestability under 15 U.S.C. §1065.  See TMEP Chapter 1600 regarding affidavits of continued use or excusable nonuse, renewal applications, affidavits of incontestability, and amendment of registrations.

Therefore, to avoid confusion, applicants should not use parentheses and brackets in the identification of goods or services in an application.  The only time parentheses may be used in an identification is when the parentheses merely explain or translate the matter preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification.

For example, "bags (tote)" in Class 18 would not be an acceptable use of parentheses.  If the identification were misinterpreted to mean that "tote" was no longer part of the identification of goods (due to an amendment of the goods or filing of a partial affidavit of continued use or renewal application), the item would merely read "bags."  That would create an ambiguity within Class 18, since it could refer to any type of bag – from an all-purpose sports bag to an evening bag – and it would make a determination of likelihood of confusion difficult.  Also, some bags are in classes other than Class 18.  Without an indication of the type of bag, classification of the goods is problematic.

However, an identification of goods such as "obi (Japanese sash)" in Class 25 would be acceptable because the parenthetical phrase merely provides further information about the goods.

1402.13    Requirement for Amendment of Portion of Identification of Goods/Services

If a requirement for an amendment of the identification of goods and/or services is expressly limited to only certain goods/services, and the applicant fails to file a response to the refusal or requirement, the application shall be abandoned only as to those particular goods/services, if it is otherwise in condition for approval for publication.  37 C.F.R. §2.65(a)(1); TMEP §718.02(a).  However, if the Office action includes an advisory stating that amendment would require the payment of additional fees because the fee paid is insufficient to cover all the classes, and the applicant fails to file a response, the entire application will be abandoned.  TMEP §718.02(a).

Accordingly, when the identification of goods/services includes some terminology that is indefinite and some terminology that is acceptable, the examining attorney should specify which terminology is indefinite, suggest amended language if possible, and indicate that the rest of the identification is acceptable.

When an applicant fails to respond to a requirement to amend some terminology in an otherwise acceptable identification of goods/services, and the application is otherwise in condition for approval for publication, the examining attorney should issue an examiner’s amendment that clearly sets forth the changes that will be made to the identification of goods/services.  No prior authorization from the applicant is needed to issue an examiner’s amendment in this situation.  See TMEP §707.02 regarding examiner’s amendments without prior authorization by the applicant.

1402.14    Identification of Goods/Services Must Conform to Rules and Policies in Effect at the Time Registration is Sought

The question of whether an identification of goods/services is acceptable must be determined on the basis of the facts and evidence that exist at the time registration is sought, that is, at the time of filing.  Cf. TMEP §1216.01.  The international classification system and USPTO policy on acceptable identifications change periodically (see, e.g., TMEP §§1401.09 et seq. regarding the restructuring of international class 42).  Therefore, the fact that an identification of goods or services was accepted in an earlier-filed application or prior registration does not necessarily mean it is controlling in a later-filed application.  See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (examining attorney’s requirement for amendment of the term "chronographs" in the identification of goods upheld, notwithstanding applicant’s ownership of several registrations in which this term appears without further qualification in the identification).

1402.15    Procedures for Processing Unacceptable Amendments to Identifications

If an applicant submits an amendment to the identification of goods/services and the examining attorney determines that the amendment is unacceptable, the examining attorney must issue an action refusing to accept the amendment.  If an unacceptable amendment was entered into the automated records of the USPTO, and an acceptable amendment was subsequently submitted, the examining attorney must ensure that the automated records are modified to reflect the acceptable identification prior to approving the mark for publication.

If the applicant later submits arguments in support of acceptance of the amendment and the examining attorney determines that the amendment is still unacceptable, the examining attorney must issue a final refusal of the amendment, if the application is otherwise in condition for final action.