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).
Identifications in §44 applications must comply with identification and classification policy, including guidance set forth in the ID Manual, in effect on the filing date of the application with the USPTO. For applications filed under §44(d), the filing date, rather than the priority date, should be used to determine whether an identification is acceptable and properly classified. See TMEP §1401.10. For applications filed under §44(e), the filing date, rather than foreign registration date, should be used to determine whether an identification is acceptable and properly classified.
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. See37 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 §§1403–1403.05 regarding multiple-class applications.