1108.02(d) Identification of Goods/Services
In an extension request, the applicant must identify or reference the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a)(3), (b)(3). The goods/services identified in the extension request must conform to those identified in the notice of allowance. 37 C.F.R. §2.89(f). If the applicant wants to delete goods/services from the application, the applicant should clearly specify those goods/services to be deleted.
The applicant may incorporate by reference the goods/services listed in the notice of allowance. See 37 C.F.R. §2.89(f). This is advisable where applicant intends to retain all the goods/services identified in the notice of allowance to avoid the possibility that goods/services may be inadvertently omitted. Thus, the applicant may specify all the goods/services in the notice of allowance by electing the TEAS form option that covers "all the goods/services listed in the Notice of Allowance" for a trademark or service mark, and covers "the goods/services/collective membership organization listed in the Notice of Allowance" for a collective/certification mark.
If the applicant lists the goods/services with specificity in the extension request, and omits any goods/services that were listed in the notice of allowance, the USPTO will presume these goods/services to be deleted. 37 C.F.R. §2.89(f). The applicant may not thereafter request that the goods/services be reinserted in the application. Id. In this situation, the applicant cannot file a petition under 37 C.F.R. §2.66, claiming unintentional delay in filing an extension request for the omitted goods/services.
Permitted paper filings. If an extension request permitted to be filed on paper (see TMEP §301.02) fails to identify the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce, the ITU staff will assume that the applicant has a continued bona fide intention to use the mark in commerce on or in connection with all the goods/services identified in the notice of allowance, and will grant the extension request, if it meets all other requirements of 15 U.S.C. §1051(d)(2) and 37 C.F.R. §2.89. In re Omega-3 Mktg., Inc., 35 USPQ2d 1158, 1159 (Comm’r Pats. 1994).
If the paper-filed extension request lists goods/services to be deleted and the result would be to delete all of the goods/services in the notice of allowance, or if the applicant fails to identify or incorporate by reference any goods/services, the USPTO will presume this was a clerical error. Applicant will be allowed to correct the mistake. The ITU staff will issue a letter noting that no goods/services were specified or incorporated by reference in the extension request, and granting applicant thirty days in which to submit a verified statement clarifying the goods/services. However, if by mistake the applicant lists goods/services to be deleted and removal does not result in the deletion of all goods/services, the goods/services specifically listed will be deleted and may not later be reinserted.
See TMEP §1107 regarding amendments to the identification of goods/services filed between the issuance of the notice of allowance and the filing date of the statement of use.
1108.02(d)(1) Identification of Collective Membership Organization
In an extension request for a collective membership mark, the applicant must, in lieu of goods or services, instead identify or reference the nature of the collective membership organization in connection with which the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce. 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a)(3), (b)(3). The collective membership organization identified in the extension request must conform to the notice of allowance. 37 C.F.R. §2.89(f).
Permitted paper filings. If an extension request permitted to be filed on paper (see TMEP §301.02) fails to identify the goods/services/collective membership organization with which the applicant has a continued bona fide intention to use the mark in commerce, the ITU staff will assume that the applicant has a continued bona fide intention, and entitlement, to exercise legitimate control over the use of the mark in commerce on or in connection with all the goods/services/collective membership organization identified in the notice of allowance, and will grant the extension request, if it meets all other requirements of 15 U.S.C. §1051(d)(2) and 37 C.F.R. §2.89. In re Omega-3 Mktg., Inc., 35 USPQ2d 1158, 1159 (Comm’r Pats. 1994).