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. See 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). For example, if an identification in a §66(a) application is the entire class heading for a particular class, the applicant must replace any indefinite wording with goods or services within the ordinary meaning of the indefinite wording in the heading and may not amend the identification to include goods or services in other classes.
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.
Example - "Food" is indefinite, and may be amended to "fresh fruit" (Class 31), or "processed fruit" (Class 29), or "dog food" (Class 31). However, "food" may not be amended to "whiskey" (Class 33).
Example - "Metal parts" is indefinite, and may be amended to "metal threaded fasteners" (Class 6), or "machine parts, namely, metal grounding bushings" (Class 7). However, "metal parts" may not be amended to "metal chairs" (Class 20).
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.
Example - If the applicant begins an indefinite identification of goods with superfluous wording such as "sale of . . .," "production of . . .," "making of . . .," "manufacture of . . ." (as long as it does not include the wording "custom" or "to the order and specification of others"), or similar wording, the applicant may amend to specify either goods or services within the scope of the existing identification. However, the specific terms used to preface the goods do establish some limitation as to scope. "Sale of" may justify an amendment to retail store or mail order services for specific goods, or to the goods themselves, but not to custom manufacturing or advertising agency services related to those goods.
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. See TMEP §1402.07(c).
Example - If the applicant specifies "computer anti-virus software," the applicant may only amend the identification to specify computer software goods or services within the scope specified, e.g., "downloadable computer anti-virus software," in Class 9 and/or "providing temporary use of non-downloadable computer anti-virus software," in Class 42. The applicant may not amend from "providing temporary use of non-downloadable computer anti-virus software" to "downloadable computer anti-virus software" or vice versa because the format of the software has been limited in the identification. Nor may the applicant amend to any goods or services outside the scope of those already identified, such as "Computer virus protection services," in Class 42.
In §66(a) applications, the classification assigned by the IB cannot be changed, unless the IB corrects the classification; thus, the applicant must replace any unacceptable wording in a §66(a) application with definite goods or services properly classified in the class assigned by the IB. See TMEP §§1401.03(d), 1402.01(c), and 1904.02(c).
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 filing under §1 or §44 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.
Example - If the applicant specifies "newsletters in the field of accounting," the applicant may amend to "printed newsletters in the field of accounting" (Class 16), "downloadable electronic newsletters in the field of accounting" (Class 9), "electronic publications, namely, newsletters in the field of accounting recorded on computer media" (Class 9), or "providing on-line newsletters in the field of accounting" (Class 41). See TMEP § 1402.11(a)(x) regarding online publications.
Example - If the applicant identifies the goods as "recorded computer programs" without specifying the field, the applicant is limited to types of specific recorded computer programs for the purposes of amendment. The applicant has identified a particular type of goods, but USPTO policy requires further specificity as to the purpose or function of the goods. An applicant who has identified its goods as "clothing" would likewise be limited to goods within the scope of the term "clothing."
Example - If the applicant specified "retail store services," the applicant would be limited to amendments within the scope of this service. Although USPTO policy requires further specificity as to field, the applicant has identified a definite type of service.
Example - If the applicant identifies its goods as "stationery," "wine labels," or "menus," the applicant is restricted, in any amendments, to goods within the scope of the type indicated. The applicant could not amend to specify other types of goods or services, such as "wine" or "restaurant services."
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 or services, and the examining attorney determines that the amendment is unacceptable, the examining attorney should refer to the identification of goods or services 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.