1904.15(a) Limitations to Goods/Services
Upon receipt of notification from the IB that a limitation may affect a §66(a) registration, the USPTO may declare that the limitation has no effect in whole or in part. Regs. Rule 27(5)(a). Such declaration must be sent promptly to the IB within 18 months as required by the Regulations. Regs. Rule 27(5)(c). The USPTO must indicate the reasons the limitation has no effect, in whole or in part; the corresponding essential provisions of the law; and whether the declaration is subject to review or appeal. Regs. Rule 27(5)(b)(i-iv).
The MPU reviews all limitations to determine whether the limited goods/services have effect in the United States and, if so, enters the relevant limited goods/services into the Trademark electronic record and ensures that an updated registration certificate is issued to the holder.
If the MPU determines that some or all of the limitation constitutes an unacceptable broadening or extension, rather than a narrowing, of the goods/services (see TMEP §1402.06(a)–(b)), it will forward the case to the Post Registration division. The Post Registration division will issue an Office action refusing to accept the limitation, in whole or in part, under §7 as an unacceptable amendment to the registered extension of protection. See 15 U.S.C. §1057. Such Office action must indicate that the limitation has no effect in the United States in whole or in part, as appropriate; explain the reasons for the finding; cite the corresponding essential provisions of the law; specify any goods/services that are acceptable and given effect; and indicate that the registrant may file a petition to the Director pursuant to 37 C.F.R. §2.146 to review the action of the Post Registration examiner. See 37 C.F.R. §2.176. See TMEP §1609.03 regarding amendment of the identification of goods or services in a §66(a) registration.
The Post Registration examiner must also notify the MPU of the action, and the MPU will notify the IB that all or a portion of the limitation is found to have no effect in the United States as required by the Regulations. Regs. Rule 27(5)(a)-(c). Accordingly, after the Office action issues, the MPU will forward a copy to the IB within 18 months of the date of the IB’s notification of the limitation.
If a limitation results in the deletion of all goods/services identified in the §66(a) registration, it will be cancelled.
See also TMEP §1904.02(f)(i) regarding limitations in general, §1904.03(g)(i) regarding limitations of the goods/services in pending requests for extension of protection (§66(a) applications), and §1906.01(e) for information about filing a request to record a limitation with the IB.