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) A term that clearly includes particular items that are classified in more than one class (e.g., "artists’ materials") is not acceptable, 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) ("chronographs" held indefinite because it includes both time-recording devices in Class 9 and watches in Class 14 and because merely classifying the goods in only one of the classes does not preclude a requirement for further specificity in the identification). 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, i.e., a football helmet would be in Class 9; the football uniform would be in Class 25, and the football padding equipment 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 (e.g., "metallic parts"). 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. For example, "mufflers" in the clothing class would not require further modification to indicate that articles of clothing are intended, rather than automotive mufflers. 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) ("chronographs" held indefinite because it includes both chronographs that function as time recording devices in Class 9 and chronographs that function as watches in Class 14). For example, tools are classified in Class 7 if they are power driven or Class 8 if they are not power driven. The identification should include wording to assist in determining whether the tools should be classified in Class 7 or 8 (e.g., "powered," "non-powered," "hand tools, namely").
(4) The common understanding of words or phrases used in an identification determines the scope and nature of the goods or services. 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, "skin lotion" usually refers to a cosmetic product - one that is not medicated. For that reason, it can be classified in Class 3 without further specification. However, a skin lotion that is medicated should be classified in Class 5, and the identification should indicate that the product is medicated in order to justify its classification in Class 5 rather than in the more commonly understood and assigned Class 3.

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 so broad 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. §2.61(b). 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. §2.61(b). 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. The terms "including," "comprising," "such as," "and the like," "and similar goods," "products," "concepts," "like services" and other indefinite terms and phrases are almost always unacceptable.

The terms "namely," "consisting of," "particularly," and "in particular" 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, drills in Class 7; needle point kits consisting of needles, thread, and patterns in Class 26; or projectors, particularly projectors for the entertainment industry in Class 9).

In limited situations for closely related goods, certain indefinite terms may be used in explanatory phrases that follow a definite term -- for example, "fabric suitable for making coats, suits, and the like." See Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953).

"Parts therefor," as related to machinery, is acceptable when it follows a definite identification. "Accessories therefor" is usually considered indefinite, but it has been allowed in some cases, particularly in the toy field. Identifications such as "dolls and accessories therefor" and "toy vehicles and accessories therefor" are acceptable because all goods that fall within that broad designation 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). However, this phrase should only be used in a situation where it is clear that the goods encompassed by the phrase relate closely to the primary goods and would all be classified in the same class as the primary goods.

1402.03(b) House Marks

House marks are marks used by an entity on a wide range of goods. Marks of this type are often used in the chemical, pharmaceutical, and food fields. A house mark is different from a product mark that is used on a specific item or closely related items. A product may bear both a product mark and a house mark.

Under certain limited circumstances, an applicant may apply to register a mark as a house mark. In an application for registration of a house mark, the identification of goods may include wording such as "a house mark for...." As with other applications, these applications must define the type of goods with sufficient particularity to permit proper classification and to enable the USPTO to make necessary determinations under §2(d) of the Trademark Act, 15 U.S.C. §1052(d).

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 catalogues, or similar evidence showing broad use of the mark, to substantiate this claim. See 37 C.F.R. §2.61(b).

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). If the applicant cannot do so, the applicant will be required to amend the identification of goods to conform to the usual standards for specificity.

The USPTO will register a mark as a house mark only in the limited circumstances where the mark is actually used as a house mark. Therefore, if an applicant seeks to register a house mark in an application under §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 must be amended to conform to the usual standards for 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 products. To qualify for the use of such terminology, the line of products 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. Another example would be pharmaceuticals, which are almost all classified in Class 5. Therefore, as long as the specimens and/or other evidence show use of the mark on virtually all of these goods, the "full line of" language may be used. See 37 C.F.R. §2.61(b). It may not be used in a situation 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., a non-electric egg beater is 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 products 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 products. 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).

Although the USPTO will accept "a full line of clothing" as a sufficient identification, because the applicant is committing to virtually all the goods 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," the USPTO will not accept an identification of goods as merely "clothing." In the latter situation, 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 products (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 products, all of the products 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.

An intent-to-use applicant who wishes to register a mark for a full line of a genre of products 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 products 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 products 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 products. 37 C.F.R. §2.61(b). If the applicant cannot do so, the applicant will be required to amend the identification of goods to conform to the usual standards for specificity.

The USPTO will register a mark for a "full line of" a genre of products only in the limited circumstances where the mark is actually used as such. If an applicant seeks to register a mark for a "full line of" a genre of products in an application under §44 or §66(a) of the Trademark Act, the examining attorney must require evidence to substantiate use for a full line of products. 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 products. 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." If the applicant cannot establish sufficient use for a "full line of" a genre of products, the identification of goods must be amended to conform to the usual standards for specificity.

1402.03(d) Identifying Computer Programs with Specificity

Any identification of goods for computer programs must be sufficiently specific to permit determinations with respect to likelihood of confusion. The purpose of requiring specificity in identifying computer programs 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). Due to the proliferation and degree of specialization of computer programs, broad specifications such as "computer programs in the field of medicine" or "computer programs in the field of education" will not be accepted, unless the particular function or purpose of the program in that field is indicated. For example, "computer programs for use in cancer diagnosis" or "computer programs for use in teaching children to read" would be acceptable.

Typically, indicating only the intended users, field, or industry will not be deemed sufficiently definite to identify the nature of a computer program. However, this does not mean that user, field, or industry indications can never be sufficient to specify the nature of the computer program adequately. For example, "computer programs in the field of geographical information systems" would be acceptable. Geographical information systems, also known in the industry as GIS, are well-defined computer applications that do not need further definition. If the identification in the application does not adequately specify the nature of a computer program, further information may be requested. Any questions concerning the recognition of a term of art for a computer program should be discussed with senior attorneys, managing attorneys, or other examining attorneys who are knowledgeable in the computer field.

If an applicant asserts that the computer programs at issue serve a wide range of diverse purposes, the applicant must submit appropriate evidence and/or specimens to substantiate such a broad identification of goods. See 37 C.F.R. §2.61(b); TMEP §§1402.03(b)–(c).

Generally, an identification for "computer software" will be acceptable as long as both the function/purpose and the field are set forth. Some general wording is allowed. The following wording is acceptable:

(1) Computer game software.
(2) Computer operating programs and computer operating systems: Software under this category comprises master control programs that run the computer itself. They are the first programs loaded when the computer is turned on and set the standards for the application programs that run in the operating system or operating program.
(3) Computer utility programs: These programs must be designed to perform maintenance work on a computer system or components thereof, such as file management (sorting, copying, comparing, listing, and searching files), as well as diagnostic and measurement routines that check the health and performance of the computer system. Beware of identifications that read "Computer utility programs, namely, business software." - This is NOT a utility program.
(4) Computer software development tools: These programs are designed to create other computer programs. This is one of the few exceptions in which use of the term "tools" is acceptable.
(5) Database management software [if for general use, otherwise indicate specific field]: Software that controls the organization, storage, retrieval, security, and integrity of data in a database (an electronically stored collection of data). Other examples:
- General purpose database management software.
- Computer software for use in database management.
- Database management software for use by financial advisors.
- Database management software in the field of baseball cards.
(6) Spreadsheet software [if for general use, otherwise indicate specific field]: Software that simulates a paper spreadsheet, or worksheet, in which columns or individual cells of numbers are summed, subtracted, multiplied, or divided with the contents of other columns or cells for budgets and plans. Other examples:
- General purpose spreadsheet software.
- Computer software for use as a spreadsheet.
- Spreadsheet software for use by budget analysts.
(7) Word processing programs [if for general use, otherwise indicate specific field]: Software used to create text documents. Other examples:
- Downloadable computer software for word processing.
- Computer programs for word processing.
(8) Computer aided design (CAD) software [if for general use, otherwise indicate specific field]: Computer Aided Design software is generally used to design products. CAD software is available for generic design or specialized uses, such as architectural, electrical, and mechanical design. Other examples:
- Computer aided design (CAD) software for general use.
- Computer aided design (CAD) software used for designing integrated circuits.
- Computer aided design (CAD) software for architectural use.
(9) Computer aided manufacturing (CAM) software [if for general use, otherwise indicate specific field]: Computer Aided Manufacturing software automates manufacturing systems and techniques, including numerical control, process control, robotics, and materials requirements planning. Other examples:
- Computer aided manufacturing (CAM) software for general use.
- Computer aided manufacturing (CAM) software used in the manufacture of airplane components.
- Computer aided manufacturing (CAM) software for integrated circuits.
(10) CAD/CAM software [if for general use, otherwise indicate specific field]: Computer Aided Design/Computer Aided Manufacturing software integrates functions of CAD and CAM software in that products designed by the CAD systems are directly inputted into the CAM systems for manufacture.

Examples of indefinite and unacceptable wording include the following:

(1) Computer programs featuring multimedia (unless the applicant specifies the content, e.g., motion pictures in the field of [specify], recorded on computer media).
(2) Computer firmware (unless the applicant specifies the function/purpose of the program, and, if the program is content or field specific, the field of use).
(3) Computer devices (must specify the common commercial name therefor).
(4) Computer accessories (must specify the common commercial name therefor).

See TMEP §1402.11(a) regarding identification and classification of computer services.

1402.03(e) Identifying Publications with Specificity

When the goods are publications, the identification must indicate both the specific physical nature and the literary subject matter of the publication.

Example - "Magazine devoted to medicine" is acceptable.

Example - "Television programming newsletter" is acceptable.

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 - "Children’s storybooks" is acceptable.

Even if the mark itself indicates the subject of a publication, the identification must specify the subject matter.

As a general rule, "books" should be described by subject matter or class of purchasers (e.g., exercise books or children’s books). In the case of a mark used by a publishing house on books, a general identification, such as "a house mark for books" or "a full line of books" is sufficient if supported by the record. 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.

When the subject matter is not a significant aspect of a publication, such as with in-house newsletters, the identification may merely give an indication of the general character or type of the publication.

Example - "Employee newspaper" may be accepted.

See TMEP §1402.11(a) regarding online publications.

1402.03(f) Recognition of Industry Terms

Industry terminology 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 the references or evidence submitted raise any doubt as to the widespread recognition of the terminology, a brief explanation of the product or activity may be included in the identification, but the accepted industry terminology may remain part of the identification as well.