1904.03(g) Notification of Restrictions to Goods/Services with Respect to a Pending Request for Extension of Protection
1904.03(g)(i) Limitations to Goods/Services
Limitation Filed Separately from §66(a) Application
The Madrid Processing Unit (MPU) reviews all separately filed limitations and will notify the examining attorney that a limitation was received.
Scope is determined according to the operative identification of goods and/or services when the limitation is examined. Limitations are processed in the order of their effective dates, which appears in the limitation form as the date of recordal in the international register. See Regs. Rule 27(1). The operative identification is the last acceptable amended identification, or the original identification if no amendment has been accepted. TMEP §§1402.07(d)-(e). Therefore, the applicant is not bound by the scope of the identification in a limitation that exceeds the scope of the application or any previously accepted amendments, but rather by the identification of goods and/or services that were operative prior to the recordal date of the limitation. 37 C.F.R §§2.71(a), 7.25(a); TMEP §1904.02(c)(iv).
If the USPTO receives a limitation from the IB before the first Office action issues, the examining attorney will include any requirements arising from the limitation in the first Office action. If the separately filed limitation puts the application in condition for publication before a first Office action issues, the examining attorney still must issue an Office action raising all of the requirements based on the application as filed. The USPTO is required to notify the IB of all grounds for refusing registration of the application as filed. 15 U.S.C §1141h(c); Article 5. The examining attorney must state in the Office action that the limitation resolves the requirements related to the original identification of goods and/or services. Once the MPU sends the Office action to the IB, the examining attorney may enter the limitation via an examiner’s amendment, after securing approval of the amendment from the proper person. See 37 C.F.R §§2.32(a)(4), 2.62(b), 2.74(b); TMEP §§609.01(a), 707.01, 803.05(b), 811.01. Only an application itself that is in condition for approval for publication on first action may be approved without applicant’s email address and attorney information of record. See TMEP §§609.01(a), 803.05(b), 1904.02(h). Even if a separately filed limitation would put an application in condition for publication, the application may not be approved for publication on first action because the USPTO is required to notify all grounds for refusing registration of the request for extension of protection to the IB. 15 U.S.C §1141h(c); Article 5. Otherwise, the International Register will indicate that the USPTO granted protection to the extension of protection in its original condition, without requiring amendments to the original listing of goods and/or services in the Section 66(a) application.
If the USPTO receives a limitation from the IB after an Office action has issued, the limitation cannot be considered a response to the Office action because it does not meet the requirements of 37 C.F.R §2.62. The examining attorney will take action on the limitation after the USPTO receives a timely response to the outstanding Office action. However, if the limitation puts the application in condition for publication, the examining attorney may enter the amendments via an examiner’s amendment after securing approval of the amendment from the proper person, if applicant’s email address and attorney information have already been provided. See 37 C.F.R §§2.32(a)(4), 2.62(b), 2.74(b); TMEP §§609.01(a), 707.01, 803.05(b), 811.01. Otherwise, the applicant must file a timely response to the Office action to avoid abandonment of the application. 37 C.F.R §2.65; TMEP §718.02.
Once the USPTO receives a timely response to the outstanding Office action, the examining attorney will review the response to the Office action and the limitation together. When the response to the Office action also contains amendments to the identification of goods and/or services, the examining attorney will review the amendments in the order of their effective dates to determine the scope of the resulting identification. The effective date of a limitation is the date of recordal in the International Register. See Regs. Rule 27(1). The effective date of a voluntary amendment or response to an Office action filed with the USPTO is its filing date. 37 C.F.R §2.195, TMEP §§303et seq. When the USPTO receives more than one limitation from the IB before the examining attorney takes action on a response to an Office action, the examining attorney must examine the limitations in the order of their effective dates. Acceptable amendments in earlier filings determine the scope of the identification when reviewing later amendments in either an Office action or limitation. TMEP §§1402.07(d)-(e).
If the response to the Office action and the limitation place the application in condition for publication, the examining attorney must approve the application for publication. If the response to a nonfinal Office action and the limitation leave any refusals or requirements unresolved and do not raise any new issues, the examining attorney must state in any subsequent Office action whether the limitation and response to the Office action resolve any requirements related to the identification and must maintain and continue, or make final, any refusals and/or requirements that remain unresolved, as appropriate. See TMEP §714.04. If the response to the Office action or limitation raises new issues, the new requirements must be made in a new nonfinal Office action. The new nonfinal Office action also must state whether the limitation and the response to the Office action resolve any requirements related to the identification and must maintain and continue any refusals and/or requirements that remain unresolved, as appropriate. The Office action should not be sent to the IB unless it raises new issues that should have been included in the first Office action. See TMEP §§714.03 and 714.05 for further discussion of when an examining attorney should issue a nonfinal Office action rather than a final Office action.
If the response to a final Office action and the limitation leave any requirements unresolved and do not raise any new issues, the examining attorney must follow the procedures outlined in TMEP §§715.03(a)(ii), (b), and 715.04(a), (b). An Office action issued in connection with those procedures must state whether the limitation and response to the Office action resolve any requirements related to the identification and should discuss any new evidence submitted with the request for reconsideration, regardless of whether it is significantly different from evidence previously submitted. If the response to a final Office action or the limitation raises new issues, the new refusals and/or requirements must be made in a new nonfinal Office action. The Office action should not be sent to the IB unless it raises new issues that should have been included in the first Office action. See TMEP §§715.03(a), (b), and 715.04–715.04(b) for further information as to how examining attorneys should handle requests for reconsideration.
When the examining attorney must require an amendment to the identification based on a limitation, the applicant may respond by further clarifying any indefinite limited goods and/or services within the scope of the operative identification, or by deleting impermissible limited goods and/or services as outside the scope of the operative identification, if appropriate. Once an identification has been expressly amended to delete goods and/or services, those items generally may not be reinserted. TMEP §1402.07(e).
The applicant may also submit arguments in favor of accepting the limited goods and/or services that have been refused. If the issue is maintained and made final, the applicant may file an appeal to the Trademark Trial and Appeal Board pursuant to 37 C.F.R. §2.141 and §2.142 or a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2)(iii).
Alternatively, the applicant may overcome the refusal of the limited goods and/or services by filing a new limitation with the IB listing goods and/or services that are within the scope of the operative identification for a fee. If the applicant chooses to file a new limitation, it must notify the examining attorney in a timely filed response to avoid abandonment of the §66(a) application. The response must indicate that another limitation has been filed with the IB, which the applicant believes will resolve the issue, request suspension, and include a copy of the limitation filed with the IB. See TMEP §716.02(g). The examining attorney will then suspend action awaiting receipt of the notification of the limitation. The copy of the limitation in the response to the Office action serves to authenticate the limitation so that the examining attorney can take action on it once received from the IB. If notification of the limitation is not received within six months of the issuance of the suspension, the examining attorney must inquire as to the status of the limitation. See TMEP §§716.02(g), 716.05.
The following examples of limitations filed separately from the §66(a) application illustrate the procedures discussed above:
Example: The §66(a) application identifies the goods as "metal materials for building and construction" in International Class 6. The USPTO receives a separately filed limitation before the first Office action issues, which indicates that the limited goods are "metal materials for residential building and construction." Because the limited goods are not sufficiently definite under existing USPTO identification policy, the examining attorney must require the applicant to amend the ID to list the particular Class 6 metal materials for residential building and construction (e.g., "metal materials for residential building and construction, namely, soffits, fascia, and drywall corner bead").
Example: The §66(a) application identifies the goods as "medical instruments" in International Class 10. The USPTO receives a separately filed limitation before the first Office action issues, which indicates the limited goods are "medical instruments for use in surgery." The identification in the limitation is acceptable because "medical instruments for use in surgery" are within the scope of the ordinary meaning of "medical instruments" and are acceptably definite. The record indicates that applicant is foreign-domiciled, applicant’s appointed U.S.-licensed attorney provided applicant’s email address and all of the required attorney information via a voluntary amendment, and no other outstanding issues need to be raised in connection with the application. The examining attorney must issue an Office action requiring the applicant to amend the identification of goods in the application as filed because "medical instruments" are unacceptable without further specification. The Office action must indicate that the limitation resolves the deficiencies in the identification of goods in the application as filed. The Office action is required because the application, as filed, is not in condition for publication. Once the Office action has been sent to the IB, the examining attorney may enter the changes to the identification of goods via an examiner’s amendment after securing the approval of the amendment from the proper person. TMEP §707.01.
Example: The §66(a) application identifies the goods as "medical instruments" in International Class 10. The USPTO receives a separately filed limitation before the first Office action issues, which indicates the limited goods are "medical instruments for use in surgery." The identification in the limitation is acceptable because "medical instruments for use in surgery" are within the scope of the ordinary meaning of "medical instruments" and are acceptably definite. The record indicates that applicant is foreign-domiciled, and the record does not include applicant’s email address or the required U.S.-licensed attorney information. The examining attorney must issue an Office action requiring the applicant to amend the identification, provide its email address, and provide the required information for its U.S.-licensed attorney. TMEP §803.05(b). The Office action is required because the application, as filed, is not in condition for publication. The Office action must indicate that the limitation resolves the deficiencies in the identification of goods in the application as filed.
Example: The §66(a) application identifies the goods as "medical apparatus" in International Class 10. The examining attorney issues an Office action requiring further specificity of the type of "medical apparatus," in accordance with USPTO policy. The USPTO then receives a limitation, which indicates that the limited goods are "medicine cabinets." Such goods exceed the scope of International Class 10 since "medicine cabinets" are properly classified in International Class 20. In addition, the wording "medicine cabinets" exceeds the scope of the ordinary meaning of "medical apparatus." "Medical apparatus" refers to "machines, tools, and equipment for doing something" related to medical activities, and this would not encompass a "small cupboard in a bathroom in which you keep soap, toothpaste etc." See Macmillan Dictionary, Macmillan Publishers Limited 2009-2017. No response to the Office action has been filed, but there is time remaining in the response period. The examining attorney should not take action on the limitation since a response to the Office action has not been received. If the applicant does not file a timely response to the Office action, the application will abandon.
If, however, the applicant amends the identification to "medical apparatus for use in orthopedic surgery" in a timely response to the Office action that is filed after the recordal date of the limitation, the proposed amendment is compared to the identification in the application to determine acceptability for scope purposes. As noted above, the identification in the limitation cannot be accepted because it exceeds the scope of the international registration. Therefore, the operative identification for purposes of amendment in response to the Office action remains the original identification in the application. Since "medical apparatus for use in orthopedic surgery" is within the scope of the original identification and is acceptably definite, the examining attorney will accept the amendment. If there are no other outstanding issues, the examining attorney may approve the application for publication since the response to the Office action resolves the issue with the identification.
Example: The §66(a) application identifies the goods as "clothing, headgear, and footwear" in International Class 25. The examining attorney issues an Office action requiring further specificity of the type of "clothing" and "headgear," in accordance with USPTO policy. The applicant submits a timely response to the Office action, amending the goods to "clothing, namely, sportswear and formalwear; headgear, headsets, and headphones; footwear." The "sportswear," "formalwear," and "headgear" require further specificity, and the "headsets" and "headphones" are beyond the scope of the international registration because these goods are properly classified in Class 9. The examining attorney will issue a final Office action maintaining and making final the requirement to provide an acceptable identification. Before the expiration of the response period, and before the applicant files a request for reconsideration or notice of appeal, the USPTO receives a limitation with a recordal date that is later than the previous response to the Office action. The limitation indicates that the limited goods are "clothing, namely, sportswear; headgear, namely, headsets, and headphones; footwear." The limitation is unacceptable because it lists indefinite and misclassified goods. The examining attorney must not take action on the limitation until the applicant responds to the final Office action. If the applicant believes that the limitation places the application in condition for publication, the applicant must file a request for reconsideration so that the limitation will be reviewed by the examining attorney. If the applicant does not file a timely request for reconsideration or notice of appeal, the application will abandon.
Example: The §66(a) application identifies the goods as "hand tools" in International Class 8. The examining attorney issues an Office action requiring the applicant to specify the particular hand tools. The applicant subsequently amends the listing of goods/services to "hand tools, namely, manual can openers, kitchen scissors, kitchen knives, non-electric fruit peelers, egg slicers." Before the examining attorney takes action on the response to the Office action, the USPTO receives a limitation with a recordal date that is later than the filing date of the response to Office action. The limitation indicates that the limited goods are "hand tools for use in preparing food; hand tools for use in home repair." The examining attorney reviews the amended identification in the response to the Office action first since its filing date precedes the recordal date of the limitation and determines that the proposed identification in the response is acceptable. Therefore, the identification in the response to the Office action sets the scope for further amendments. The examining attorney then compares the goods in the limitation with the goods as amended by the applicant in the response to the Office action. Here, the "hand tools for use in home repair" in the limitation are beyond the scope of the operative listing of goods "hand tools, namely, manual can openers, kitchen scissors, kitchen knives, non-electric fruit peelers, egg slicers" since none of these goods are for use in home repair. Therefore, the examining attorney must issue a new, nonfinal Office action refusing the "hand tools for use in home repair" as beyond the scope of the application as amended in the response to the Office action. Further, the examining attorney must incorporate the acceptable wording from the limitation into the operative listing of goods and notify the applicant in the Office action that "hand tools for use in preparing food, namely, manual can openers, kitchen scissors, kitchen knives, non-electric fruit peelers, egg slicers" comprises the operative language of the identification for purposes of future amendment. The examining attorney must also maintain and continue any refusals and/or requirements that were not resolved by the response to Office action. The examining attorney must not send the Office action to the IB since the new issue is not based on the application as filed.
Limitation Within §66(a) Application
When a holder includes a limitation of the goods and/or services within the international application or subsequent designation form and indicates that the limitation should apply to the extension of protection to the United States, the limitation appears within the §66(a) application, rather than as a separate filing. In this circumstance, the goods and/or services in the international registration are not extended to the United States for protection. Instead, only the limited goods and/or services are extended to the United States for protection. Accordingly, the limited goods and/or services, rather than the goods and/or services in the international registration, are treated as the original listing of goods and/or services in the §66(a) application. However, by law, the listing of goods and/or services in the international registration continues to set the scope of the goods and/or services that may be included in an extension of protection. 15 U.S.C. §1141e(a); Article 3(1); Regs. Rule 9(5)(d)(vi). Therefore, the goods and/or services in a limitation that appear within a §66(a) application are refused if they exceed the scope of the goods and/or services in the international registration as listed in the application.
If the examining attorney determines that some or all of the limitation is not acceptable because the requested change would result in a broadening or extension, rather than a narrowing, of the goods and/or services in the international registration (see TMEP §1402.06(a)–(b)), he or she must issue an Office action: (1) refusing to accept the listing of goods and/or services in the limitation, in whole or in part; (2) explaining the reasons for the finding; (3) stating the corresponding essential provisions of the law; and (4) indicating that the limited goods and/or services are not entitled to the benefits of extension of protection to the United States. See 15 U.S.C §1141h(b).
When the limitation included within a §66(a) application exceeds the scope of the goods and/or services in the international registration as listed in the application, the examining attorney does not advise the applicant that the goods and/or services in the international registration remain operative for purposes of future amendment because the full listing of goods and/or services in the international registration were never extended to the United States. Instead, the examining attorney will advise the applicant that it must amend the goods and/or services to conform to the scope established by the limited goods and/or services as well as the scope of the goods and/or services in the international registration.
The applicant may respond to such a refusal by amending the limited goods and/or services to goods and/or services within the scope of the identification in the international registration and the scope of the limitation, if appropriate. The applicant may not add goods and/or services listed in the international registration that were deleted by the limitation. Where a conforming amendment cannot be submitted, the applicant can respond by deleting the limited goods and/or services that have been refused. Once an application has been expressly amended to delete goods and/or services, those items generally may not be reinserted. TMEP §1402.07(e).
The applicant may also submit arguments in favor of accepting the goods and/or services that have been refused. If the refusal is maintained and made final, the applicant may file an appeal to the Trademark Trial and Appeal Board pursuant to 37 C.F.R. §2.141 and §2.142 or petition to the Director pursuant to 37 C.F.R. §2.63(b)(2)(iii).
Additionally, the applicant may overcome the refusal of the limited goods and/or services by filing a new limitation with the IB that lists goods and/or services that are within the scope of the goods and/or services in the international registration for a fee. If the applicant chooses to file a new limitation, it must notify the examining attorney in a timely filed response in order to avoid abandonment of the §66(a) application. The response must indicate that another limitation has been filed with the IB, which the applicant believes will resolve the issue, request suspension, and include a copy of the limitation filed with the IB. See TMEP §716.02(g). The examining attorney will then suspend action awaiting receipt of the notification of the limitation. The copy of the limitation in the response to the Office action authenticates the limitation so that the examining attorney can take action on it once received from the IB. If notification of the limitation is not received within six months of the issuance of the suspension, the examining attorney must inquire as to the status of the limitation. See TMEP §§716.02(g), 716.05.
In rare circumstances, a limitation that exceeds the scope of the entire listing of goods and/or services in the international registration could result in there being no goods and/or services in the §66(a) application that are entitled to extension of protection to the United States. For example, this may happen if a limitation within the §66(a) application lists only goods and/or services that exceed the scope of the goods and/or services in the international registration and that cannot be amended to stay within the scope of the limitation as well as the international registration. In such case, the examining attorney must consult with his or her managing or senior attorney, who will notify the Office of the Deputy Commissioner for Trademark Examination Policy.
The following are examples of limitations filed within the §66(a) application that illustrate the procedures discussed above:
Example: The §66(a) application identifies the goods in the international registration as "pharmaceuticals" in International Class 5. The limitation included in the §66(a) application indicates that the limited goods are "pharmaceuticals being aspirin, allergy tablets, and adhesive bandages." Since "aspirin" and "allergy tablets" are within the scope of the ordinary meaning of "pharmaceuticals," such goods are within the scope of the goods in the international registration and are entitled to the benefits of extension of protection to the United States. However, as "adhesive bandages" are not within the scope of the ordinary meaning of "pharmaceuticals," the examining attorney must indicate in the first Office action that the limitation is refused "in part" as to the "adhesive bandages" because this wording exceeds the scope of the international registration. As the limitation otherwise acceptably narrows the goods to "pharmaceuticals being aspirin [and] allergy tablets," such wording comprises the operative language of the identification for purposes of future amendment.
Example: The §66(a) application identifies the services in the international registration as "advertising; business management; business administration; office functions" in International Class 35. The limitation included in the §66(a) application indicates that the limited services are "advertising, window dressing services for advertising purposes, production of advertising matter and commercials, business administration, office functions in the nature of filing documents." Such services are within the scope of the ordinary meaning of the wording of the services in the international registration and are in accordance with USPTO standards of acceptability. Thus, this wording comprises the operative language of the identification for purposes of future amendments. If the application is otherwise in condition for publication, the examining attorney may approve the application for publication. The requirements for the applicant’s email address and, if applicable, for U.S. counsel are waived since the application, as received from the IB, is otherwise in condition for publication. TMEP §803.05.
Example: The §66(a) application identifies the goods in the international registration as "artists’ materials" in International Class 16. The limitation included in the §66(a) application indicates that the limited goods are "molds, brushes, pens, pencils, paint, sculptors’ chisels and palette knives." The "paint, sculptor’s chisels and palette knives" are properly classified in International Classes 2 and 8, respectively. The examining attorney’s Office action must refuse registration as to the "paint, sculptors’ chisels and palette knives" on the ground that these goods exceed the scope of the goods in the international registration and thus are not entitled to the benefits of extension of protection to the United States. While "molds, brushes" constitutes broad wording that may encompass goods in other International Classes, these goods are within the scope of the goods because this wording includes types of artists’ materials that are classified in International Class 16. Therefore, the examining attorney must refuse "molds, brushes" as unacceptably indefinite and require the applicant to amend to goods that are properly classified in International Class 16 and that reflect the scope of the listing of goods in the international registration. For example, the examining attorney may suggest: "artists’ materials, namely, molds for modeling clays, artists’ brushes, pens, pencils" in International Class 16.
Example: The §66(a) application identifies the goods in the international registration as "clothing" in International Class 25 and "watches; necklaces" in International Class 14. The limitation included in the §66(a) application indicates that the limited goods are "watches; jewelry" in International Class 14 and "clothing" in International Class 25. In this case, "watches" in the limitation are within the scope of the goods in the international registration and would be accepted. However, "jewelry" in the limitation exceeds the scope of "necklaces" in the international registration and would not be accepted. Thus, while "watches" would remain in the identification of record for International Class 14 of the §66(a) application, "jewelry" would not be entitled to the benefits of extension of protection to the United States. The examining attorney must refuse "jewelry" as beyond the scope of the listing of goods in the international registration. However, the examining attorney may suggest that applicant simply amend this wording to "jewelry, namely, necklaces" to bring the limited goods into alignment with the scope of the goods in the international registration. Additionally, "clothing" in International Class 25 would remain in the application as it is the same as the listing in the international registration.
Example: The §66(a) application identifies the goods in the international registration as "clothing" in International Class 25. The limitation included in the §66(a) application lists "watches; jewelry" in International Class 25. The limited goods "watches; jewelry," exceed the scope of the listing of goods in the international registration. However, "clothing" would no longer be included in the identification in the §66(a) application because it was not included in the listing of limited goods, "watches; jewelry." In this case, because the applicant cannot amend the limited goods to bring them within the scope of the listing of goods in the international registration, the application contains no goods/services that are entitled to the benefits of extension of protection to the United States. The examining attorney must consult with his or her managing or senior attorney regarding how to proceed with this application.
See also TMEP §1906.01(e) for information about filing requests to record limitations with the IB and §1904.15 regarding restrictions to goods/services with respect to registered extensions of protection.
1904.03(g)(ii) Partial Cancellation of an International Registration
When the USPTO receives notification from the IB that the international registration has been restricted in part due to a partial cancellation, the MPU will determine what, if any, goods/services remain extended to the United States and amend the listing of goods/services in the relevant pending extension of protection to reflect the changes in the notice of cancellation. 15 U.S.C. §1141j(a); 37 C.F.R. §7.30.
1904.03(g)(iii) Partial Ceasing of Effect of a Basic Mark
When the USPTO receives notification from the IB that the international registration has been restricted in part due to the partial ceasing of effect of the basic registration, the MPU will determine what, if any, goods/services remain extended to the United States and amend the listing of goods/services in the relevant pending extension of protection to reflect the changes in the notice of ceasing of effect. 15 U.S.C. §1141j(a); 37 C.F.R. §7.30.