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) Terminology that includes items in more than one class is considered indefinite (e.g., "artists’ materials"), 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) ("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). 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, e.g., football helmets would be in Class 9, football uniforms would be in Class 25, and footballs would be 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. 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. 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) (finding that "chronographs" includes both chronographs that function as time recording devices in Class 9 and chronographs that function as watches in Class 14).
- (4) The common understanding of words or phrases used in an identification determines the scope and nature of the goods or services. In re Fiat Grp. Mktg. & Corporate Commc'ns S.p.A., 109 USPQ2d 1593 (TTAB 2014); TMEP §1402.07(a). 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, "toilets" usually refers to a particular sanitary apparatus and, thus, is classified in Class 11 without further specification. However, "toilets adapted for medical patients or for use by disabled persons" are classified in Class 10 as medical apparatus based on the particular use of the goods.
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 broad or so extensive 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. §§2.56(a), 2.86(a)(3), (b)(3), and (e). 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. §§2.56(a), 2.86(a)(3), (b)(3), and (e). 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. For example, the terms "including," "such as," "and similar goods," "and related goods," "products," "concepts," "like services" and other indefinite terms and phrases are almost always unacceptable. See also TMEP §1402.02 regarding entitlement to a filing date with regard to identifications.
The terms "etc.," "e.g.," and "and the like" must not be included in an identification because they are indefinite and fail to indicate a particular good or service. Such wording must not be used in an identification even if it appears as part of an explanatory clause following definite goods or services. For example, while "clothing, namely, socks, shorts, and t-shirts" is an acceptable identification in Class 25, the identification "clothing, namely, socks, shorts, and t-shirts made of cotton, etc." is indefinite due to the ambiguous wording "etc." The term "etc." may refer to the material composition of the goods or, alternatively, may indicate additional articles of clothing. Accordingly, terms such as "etc.," "e.g.," and "and the like" are inappropriate in an identification because they create ambiguity regarding the particular goods or services for which applicant uses or intends to use its mark.
Although the ID Manual includes fill-in entries that contain indefinite terms within brackets, such as "etc." or "e.g.," said wording must not be included in an identification because it is only intended to provide guidance regarding the use of the particular ID Manual fill-in entry. See TMEP §1402.04 for additional information regarding fill-in ID Manual entries.
The terms "namely," "consisting of," "particularly," "in particular," and "in the nature of" 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, hammer drills in Class 7; needlepoint kits consisting of needles, thread, and printed patterns in Class 26; or projectors particularly projectors for the entertainment industry in Class 9). The goods or services listed after "namely," "in the nature of," or the like must further define the introductory wording that precedes "namely," "in the nature of," or the like using definite terms within the scope of the introductory wording. For example, "clothing, footwear, and headwear, namely, t-shirts" is indefinite because the wording after "namely" does not include a more specific type of headwear. It is also not clear whether the goods are solely comprised of t-shirts or consist of t-shirts, footwear, and headwear. For clarity, the applicant should separate "footwear" and "headwear" from the "namely" clause using semi-colons, e.g., clothing, namely, t-shirts; footwear; headwear."
While the term "parts" alone is indefinite as an identification of goods, the wording "replacement parts therefor" or "structural parts therefor" is acceptable when such wording follows a definite identification. "Parts therefor," as related to machinery, is acceptable when it follows a definite identification for machines in Class 7.
"Accessories" and "accessories therefor" are usually considered indefinite. However, the ID Manual includes certain entries for toy, game, or plaything "accessories" in Class 28 that have been deemed acceptable for identification and classification purposes, e.g., "doll accessories." The wording "and accessories therefor" is also acceptable following a definite identification for toys, games, and playthings in Class 28. For example, "dolls and accessories therefor" and "toy vehicles and accessories therefor" are acceptable identifications because all goods that fall within that broad designation of "accessories therefor" 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).
If an international applicant under the Madrid Protocol identifies its goods as "parts," "fittings," or "accessories" without further specification, or includes the terms "and the like" or "etc.," the International Bureau is likely to issue a notice of irregularity requiring the applicant to clarify the goods. See TMEP §1902.02(f) for additional information regarding identifying goods and services in an international application.
1402.03(b) House Marks
House marks do not identify particular goods or services – rather, they identify the provider of a wide variety of goods or services, with such goods or services often themselves identified by a separate trademark or service mark. Marks of this type are often used in the chemical, pharmaceutical, publishing, and food industries. A good or service may bear both a trademark or service mark and a house mark.
Example: A pharmaceutical manufacturer, XYZ Laboratories Corp., may sell a particular pharmaceutical preparation for a cough syrup under the product mark "FORMULA M" and also feature the house mark "XYZ LABS" on the packaging for the goods. XYZ may also use the same house mark on the packaging of its other pharmaceutical preparations to indicate that all such goods come from a common source.
Example: A financial-investment company, XYZ Investors, may provide a particular stock-brokerage service under the service mark ABC FUND and also feature the house mark "XYZ" on advertising for the services. XYZ Investors may also use the same house mark on advertising for its other financial-investment services to indicate that all such services come from a common source.
In an application for registration of a house mark, the identification of goods or services may include wording such as "a house mark for...." As with other applications, these applications must use definite wording and identify the type of goods or services with sufficient particularity to permit proper classification, in accordance with the international classification system, and to enable the USPTO to make necessary determinations under §2(d) of the Trademark Act, 15 U.S.C. §1052(d). See TMEP §1401.02(a).
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 evidence showing broad use of the mark to substantiate this claim. See 37 C.F.R. §2.61(b). For example, an applicant seeking registration for a house mark for goods may provide catalogs or similar evidence showing use of the mark as a house mark. An applicant seeking registration for a house mark for services may provide a variety of advertising materials or web pages showing use of the mark as a house mark.
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).
The USPTO will register a mark as a house mark only when evidence shows sufficient use as a house mark. Therefore, if an applicant seeks to register a house mark in an application under any basis, including §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 or services must be amended to remove the indication "a house mark for" and the remaining wording must comply with the requirements for sufficient specificity as to such goods or services.
Example: The identification specifies "a house mark for transportation of goods." The examining attorney must review the specimen and any other evidence of record to determine whether the mark is being used as a house mark rather than a service mark. If the record does not support use as a house mark for the services, the examining attorney may require applicant to provide additional evidence in support of applicant’s claim. In the alternative, an applicant may amend the identification to remove the indication "a house mark for" and identify the services with sufficient specificity.
If an applicant further indicates that its "house mark" is to be used "for a full line" of products or services, the examining attorney must review both the nature of use of the mark as a house mark as well as the acceptability of the claim of "a full line" by considering the specimens or other evidence of record. See TMEP §1402.03(c) for the requirements for identifications for a "full line of" products. If the record does not support use of the "house mark" on a sufficient number or variety of products or services in its line, the examining attorney may require applicant to provide evidence in support of a "full line" or amend the identification to identify the goods/services with the requisite specificity.
Example: The identification specifies "a house mark for a full line of building paints." The examining attorney must review the specimen and any other evidence of record to determine (1) whether the mark is being used as a house mark rather than a trademark and (2) whether the mark is used on a sufficient number or variety of products (e.g., interior paints, exterior paints, house paints, floor paints, etc.) to substantiate use for a full line. If the record does not support both use as a house mark and use on a sufficient variety of products, the examining attorney may require applicant to provide additional evidence in support of applicant’s claims of the mark being both "a house mark" and for "a full line." In the alternative, the applicant may amend the goods to remove the indication "a house mark for a full line" and identify the goods with sufficient 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 goods or services. To qualify for the use of such terminology, the line of goods or services 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. Other examples would be pharmaceuticals, which are almost all classified in Class 5, insurance services, which are classified in Class 36, and telecommunications services, which are classified in Class 38. Therefore, as long as the specimens and/or other evidence show use of the mark on virtually all of these goods or services, the "full line of" language may be used. See 37 C.F.R. §2.61(b). It may not be used if the goods or services in the line are classifiable in more than one class, 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., non-electric egg beaters are 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 goods or services 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 goods or services. 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).
The USPTO will accept "a full line of clothing" as a sufficient identification, because the applicant is committing to virtually all the goods in the specified class 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." However, the USPTO will not accept an identification of goods as merely "clothing" in any other situation. If the applicant does not provide a full line of clothing, 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 goods or services (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 goods or services, all of the goods or services 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 or services.
An intent-to-use applicant who wishes to register a mark for a full line of a genre of goods or services 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 goods or services 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 goods or services 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 goods or services. 37 C.F.R. §2.61(b).
The USPTO will register a mark for a "full line of" a genre of goods or services only when evidence shows the mark is actually used as such. If an applicant seeks to register a mark for a "full line of" a genre of goods or services in an application under any basis, including §44 or §66(a) of the Trademark Act, the examining attorney must require evidence to substantiate use for a full line. 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 goods or services. 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." Evidence to substantiate the claim of use as a mark for "a full line of insurance services" or "a full line of telecommunications services" could include brochures, flyers, or webpages showing use of the mark in connection with virtually all such services. If the applicant cannot establish sufficient use for a "full line of" a genre of goods or services, the identification of goods or services must be amended to remove the indication "full line of" and the remaining wording must comply with the requirements for sufficient specificity as to such goods or services.
1402.03(d) Identifying Recorded or Downloadable Computer Programs and Software
Computer programs and computer software are goods classified in International Class 9 if they are recorded on media or are downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis. See TMEP §1402.11(a)(xii) for information about the Class 42 service of providing temporary use of online non-downloadable computer programs and software.
An identification for computer programs or computer software must be sufficiently specific to permit determinations with respect to likelihood of confusion. The purpose of requiring specificity in identifying these goods 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).
An identification for computer programs or software must indicate the function or purpose of the goods. The function is the action that the programs/software performs, for example, managing bank accounts, editing photos, or making restaurant reservations. If the computer programs or software are for use in a particular field or are content-specific, the identification should also indicate the specific field or content. The function/purpose and any field/content must be described with sufficient detail to provide public notice as to the nature of the goods and enable the USPTO to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d). See, generally, TMEP §1402.01.
In addition, for applications filed on or after January 1, 2019, identifications for computer programs or computer software in Class 9 must indicate that the goods are "recorded" or "downloadable" in compliance with Nice Classification, 11th edition, version 2019 (NCL 11-2019), based on the inclusion of "computer programs, downloadable," "computer game software, recorded," and "computer game software, downloadable" in the Nice Alphabetical List in Class 9 and the amendment of the wording "computer software" to "recorded and downloadable … computer software" in the Class Heading for Class 9.
Example - Downloadable spreadsheet software for use in the accounting field
Example - Recorded virtual reality software for medical teaching
The USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) includes fill-in entries for various types of recorded or downloadable computer programs and software in Class 9, including computer firmware, middleware, shareware, and mobile applications. These fill-in ID Manual entries may be used to describe the particular function/purpose and any field/content of the goods.
Example - Downloadable computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}
Example - Downloadable mobile applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}
Example - Recorded computer firmware for {specify the function of the program, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if firmware is content- or field-specific, the content or field of use}
Example - Recorded computer programs for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}
See TMEP §1402.04 for additional information regarding the use of fill-in ID Manual entries.
Generally, an identification for recorded or downloadable computer programs/software will be acceptable as long as both the function/purpose and the field of use/content are set forth. However, specifying the field of use or content is not required when the identified computer programs/software has a clear function and is not field- or content-specific.
Example - Downloadable pattern recognition software for sorting spam emails
Example - Downloadable computer software for editing cinematographic film
Example - Recorded computer utility programs for performing computer maintenance
Example - Recorded desktop publishing software
An identification for recorded or downloadable computer programs/software that merely indicates the intended users, field, or industry of the goods will generally be deemed indefinite. However, the ID Manual does include exceptions and lists acceptable entries for certain broader types of recorded or downloadable computer programs/software generally based on industry practice, such as "downloadable anti-spyware software." The ID Manual should be consulted to determine if broader categories or types of recorded or downloadable computer programs/software may be accepted as identifications.
Computer programs/software that are sold preinstalled or embedded in other goods are types of recorded computer programs/software. While recorded computer programs/software are generally classified in Class 9, computer programs/software that are sold embedded or preinstalled on other goods will be classified in the same class as the finished goods on which they are embedded or preinstalled. In such cases, the identification must (1) indicate that the goods are preinstalled or embedded computer programs or computer software, (2) set forth the function and any field of use of the computer programs/software, (3) indicate that the embedded or preinstalled computer programs/software are sold as a component of another finished product, and (4) set forth the common name of the finished product of which the embedded or preinstalled computer programs/software form a part. The identification may indicate that said embedded or preinstalled computer programs/software are "recorded," but it is not required. For example, "preinstalled software for accepting wagers sold as a component of gaming machines" is classified in Class 28, the class of gaming machines. See TMEP §1402.05(a) for additional information regarding identifying and classifying goods that are components.
If computer software or programs are included as part of an identification for kits, systems, gift baskets, or items sold together as a unit, the identification must indicate that the computer software or programs are goods (e.g., recorded or downloadable) to preclude inclusion of a service in an identification of goods. Without a clear indication that the computer software or programs are goods, the identification is overbroad and may encompass, for example, Class 42 technological services. An identification may not combine both goods and services.
Example - Electronic communications systems comprised of computer hardware and recorded software for the transmission of data between two points
See TMEP §1401.05(a) for additional information regarding identifying and classifying kits, gifts baskets, and items sold as a unit. See TMEP §1401.05(d) for additional information regarding identifying and classifying systems.
1402.03(e) Identifying Printed, Downloadable, or Recorded Publications with Specificity
Identifications for publications must indicate the specific type (e.g., magazines, newsletters, periodicals, etc.) and the literary subject matter of the publications. Additionally, for proper classification, identifications for publications that are goods must indicate if the publications are "printed," "downloadable," or "recorded on computer media" (or equivalent wording). Publications are classified in Class 16, if printed, and in Class 9, if downloadable or recorded on computer media.
The requirement to indicate that identifications for publications are "printed" for classification in Class 16 went into effect on January 1, 2021.
The Nice Class Heading for Class 16 includes "printed matter," and the Class Heading for Class 9 includes "recorded and downloadable media." The Nice Alphabetical List also includes publications such as "printed sheet music" in Class 16 and "electronic sheet music, downloadable" in Class 9. Thus, it is necessary to indicate the format of the publications as printed, downloadable, or recorded on electronic media, in order to properly classify the goods.
Example - "Printed magazines in the field of medicine" is acceptable in Class 16, the class for printed matter.
Example - "Downloadable electronic books in the field of golf instruction" is acceptable in Class 9, the class for downloadable media.
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.
Example - "Printed storybooks" is acceptable in Class 16.
Even if the mark itself indicates the subject of a publication, the identification must specify the subject matter of the goods to enable informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d). Generally, the identification should include a particular subject matter, e.g., biology or history. However, "general human interest" and "general interest" are acceptable subject matters of magazines and newsletters, because they are recognized terms of art in those industries. See TMEP §1402.03(f) regarding recognition of industry terms. "General human interest" indicates that a wide range of topics may be covered that appeal to the general public.
Example - "Printed magazines and newsletters in the field of general human interest" is an acceptable identification in Class 16.
However, the terms "general human interest" and "general interest" do not have a particular meaning in other industries and generally may not be used as the subject matter of other types of goods or services. For example, "printed books in the field of general human interest" in Class 16, "general feature audio recordings" in Class 9, and "providing ongoing television programs in the field of general human interest" in Class 41 are not acceptable identifications because the subject matter of the goods and services is indefinite.
As a general rule, books should be described by subject matter (e.g., "printed religious books" or "printed travel books"). In the case of a mark used by a publishing house on books, a general identification, such as "a house mark for printed books" or "a full line of printed books" is sufficient if supported by the record. See TMEP §§1402.03(b), 1402.03(c). 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.
Identifications for "electronic publications" must indicate the type and subject matter of the publications and must specify that the goods are downloadable or recorded on computer media for classification in Class 9.
Example – "Electronic publications, namely, {indicate specific type of publication, e.g., book, magazine, manual} featuring {indicate subject matter} recorded on computer media" is acceptable in Class 9.
Example – "Downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}" is acceptable in Class 9.
See TMEP §1402.11(a)(x) regarding the Class 41 service of providing online publications.
1402.03(f) Recognition of Industry Terms
Widely used industry terminology that is definite and limited to a single class 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 there is any doubt as to the widespread recognition of the terminology, a brief explanation of the product or activity should be included in the identification, but the accepted industry terminology may remain part of the identification as well. See TMEP §1402.01 regarding "terms of art."
1402.03(g) Name and/or Acronym of Trademark Protection System or Scheme for Geographical Indication Appearing in Identification
A geographical indication of origin identifies goods as originating in a territory known for a given quality, reputation, or other characteristic associated with the goods. WTO Agreement on Trade-Related Aspects of Intellectual Property Rights, Art. 22.1, Apr. 15, 1994. Geographical indications are used in connection with wines and spirits, foodstuffs, and agricultural products. They are typically names of geographic places and identify the goods as having characteristics associated with the named places, e.g., "Parmigiano Reggiano" for cheese, "Barolo" for wine, "Colombian" for coffee, and "Parma" for ham. See TMEP §§1210.08 and 1306.02.
Different countries, as well as governmental organizations such as the European Union, have different legal systems or schemes to protect geographical indications of origin. They also have different terminology that has significance in the relevant territories. The following are examples of acronyms and their full names used to designate a protection system or scheme in a particular territory:
| COUNTRY | ACRONYM | FULL NAME |
|---|---|---|
| Austria | DAC | Districtus Austriae Controllatus (Controlled District of Austria) |
| Brazil | GI | Geographical Indication |
| Canada | VQA | Vintners Quality Alliance |
| Chile | DO | Denominación de Origen (Denomination of Origin) |
| European Union | AOP | L'Appellation d'Origine Protégée (Protected Designation of Origin) |
| European Union | PDO | Protected Designation of Origin |
| European Union | IGP; PGI | Indication Géographique Protégée; Protected Geographical Indication |
| France | AOC | Appellation d'Origine Contrôlée (Controlled Designation of Origin) |
| Italy | DOC | Denominazione di Origine Controllata (Controlled Designation of Origin) |
| Italy | DOCG | Denominazione di Origine Controllata e Garantita (Controlled and Guaranteed Designation of Origin) |
| Italy | DOP | Denominazione di Origine Protetta (Protected Designation Origin) |
| Italy | IGP | Indicazione Geografica Protetta (Protected Geographic Indication) |
| Italy | IGT | Indicazione Geografica Tipica (Typical Geographical Indication) |
| Portugal | DOC | Denominação de Origem Controlada (Controlled Denomination of Origin) |
| Romania | DOC | Denumire de Origine Controlată (Controlled Designation of Origin) |
| South Africa | WO | Wine of Origin |
| Spain | DO | Denominación de Origen (Designation of Origin) |
| Spain | DOCa | Denominación de Origen Calificada (Qualified Denomination of Origin) |
The identification should only contain the common commercial or generic name of the goods and/or services, using terminology that is generally understood by the average consumers in the United States. See TMEP §1402.01. Therefore, if the identification refers to a protection system or scheme, such wording should not be part of the identification of goods and/or services featuring those goods. This includes not only when the protection system or scheme is indicated by an acronym and/or full name along with reference to a region-specific or particular protection system or scheme (e.g., "DOCa wines with a protected designation of origin Rioja"), but also when the full name is used in a general or broad sense and without reference to a region-specific or particular protection system or scheme (e.g., "wines protected by appellation of origin" or "distilled spirits protected by geographical indication").
The examining attorney must issue an identification requirement instructing the applicant to submit an amended identification that is definite and complies with the USPTO identification practice. Applicant may not delete the reference to a protection system or scheme entirely from the identification because such an amendment would impermissibly broaden the scope of the goods and/or services. See TMEP §§1402.06, 1402.07. In general, the amended identification must indicate that the goods are made or produced, or the services feature goods made or produced, in accordance with certain, specific, or adopted standards. The language used to describe the goods and/or services should be understandable to the average person and should not require an in-depth knowledge of the relevant field. TMEP §1402.01.
Examples of original identifications and the amended wording that may be recommended are:
| ORIGINAL ID | RECOMMENDED AMENDMENT |
|---|---|
| DOCG wines protected by the designation of origin Barolo, Italy | Wines produced in the Barolo region of Italy in accordance with adopted standards |
| AOC wines, namely, wines with protected appellation of origin | Wines made from grapes from {insert geographic name or region} in accordance with specific standards |
| Distilled spirits protected by appellation of origin | Distilled spirits produced in {insert geographic name or region} in accordance with certain standards |
| PGI distilled spirits from a protected geographical indication | Distilled spirits from {insert geographic name or region} made in accordance with adopted standards |
| Grape brandy protected by the appellation of origin (AOC) Beaujolais | Brandy from the Beaujolais region of France made in accordance with adopted standards |
| Cheeses complying with the characteristics of the Franche-Comté registered designation of origin | Cheese made in the Franche-Comté region of France in accordance with specific standards |
| Retail store services featuring cheese with the protected designation of origin Franche-Comté | Retail store services featuring cheese from the Franche-Comté region of France made in accordance with specific standards |
While the aforesaid identification guidance generally should be followed, there may be exceptions in light of other laws or regulations. Using Cognac as an example, identifications for grape brandy distilled in the Cognac region of France should be identified as "grape brandy distilled in the Cognac region of France in compliance with the laws and regulations of the French Government," and identifications for grape brandy distilled in the Armagnac region of France should be identified as "grape brandy distilled in the Armagnac region of France in compliance with the laws and regulations of the French Government." See 27 C.F.R. §5.22(d)(2). Examining attorneys may consult their senior or managing attorney regarding the acceptability of amended identifications. The senior or managing attorney will make the final determination or may seek guidance from the Office of Legal Policy regarding such marks.
Please note that, occasionally, the acronym and/or full name of a non-English region-specific protection system or scheme may be part of the mark and appear on the drawing. In such cases, a translation and/or disclaimer of the non-English wording must be made of record, as appropriate, the same as with other marks comprising foreign matter that is descriptive or generic. See TMEP §§809–809.03 regarding translations and TMEP §§1213–1213.11 regarding disclaimers.