1402.06 Amendments Permitted to Clarify or Limit Identification
Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, "The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services . . . ." 37 C.F.R §2.71(a); see In re Jimmy Moore LLC, 119 USPQ2d 1764 (TTAB 2016). This rule applies to all applications.
Section 7(c) of the Trademark Act, 15 U.S.C. §1057(c), provides that filing an application for registration on the Principal Register establishes constructive use and nationwide priority, contingent on issuance of the registration ( see TMEP §201.02). Therefore, the identification of goods and/or services in an application defines the scope of those rights established by the filing of an application for registration on the Principal Register.
1402.06(a) Limiting the Identification of Goods and Services
As noted above, the rules permit amendments to limit the identification of goods and services.
Deletions from the identification of goods and services are also permitted. "Deletion" means the elimination of an existing item in an identification of goods and services in its entirety. If the applicant wishes to amend the identification of goods and services to delete one or more items, the examining attorney should accept the amendment, if it is timely and otherwise proper. However, once the applicant has expressly amended the identification of goods and services to delete an item, it may not be reinserted in a later amendment.
If the applicant wishes to amend the identification of goods and services to restrict one or more of the items by inserting qualifying language within the scope of the identification or substituting more specific language, the examining attorney should accept the amendment, if it is timely and otherwise proper. Qualifying language, however, may not be deleted from an identification.
Example - If the applicant initially identifies the goods as "publications," the applicant may amend to substitute one or more terms that fall under the definition of publications. Likewise, if an applicant identifies its goods as "pamphlets," the applicant may amend to include "brochures" in Class 16 because these terms are generally equivalent and interchangeable. In either case, the applicant must specify the subject matter. See TMEP §1402.03(e).
Example - If the applicant initially identifies the goods as "commercial cooking ovens sold to restaurants" in Class 11, the applicant cannot delete the language "sold to restaurants," because this would broaden the identification.
If an applicant wishes to amend the identification of goods and services to insert a good or service that is equivalent to or logically encompassed by a good or service already included in the identification of goods and services, the examining attorney should permit the amendment, if it is timely and otherwise proper.
On the other hand, an applicant may not amend an identification of goods/services to add or substitute a term that is not logically included within the scope, or to add exclusionary language that falls outside the scope, of the terms originally identified or that is otherwise qualitatively different from the goods and services as originally identified.
Example - If the applicant identifies the goods as "computer programs," the applicant may not add or substitute computers or other items of computer hardware to the listing.
Example - If the applicant initially identifies the goods as "hats," the applicant may not add or substitute "scarves." Likewise, the applicant may not add or substitute "shirts" for "slacks."
Example - If the applicant identifies its services as "ophthalmology services," the applicant may not amend the identification to "medical services," because the amendment would expand the identification to include services beyond the scope of those identified initially.
The scope of the goods and services, as originally identified or as acceptably amended by an express amendment, establishes the outer limit for any later amendments. See TMEP §1402.07.
Under 37 C.F.R. §2.71(a), there is no general prohibition against specific types of limitations in identifications of goods and services, such as the use of negatives, exceptions, or similar language. Limitations on identifications phrased in the negative or as exceptions are acceptable, if they are otherwise proper. However, an identification may not include phrases such as "included in this class" or "not included in other classes." Such wording is not part of the common name of a good or service, and those unfamiliar with the Nice Classification would not understand the limitation. See TMEP §1402.01 for additional information.
Because 37 C.F.R. §2.71(a) precludes additions that broaden the identification, examining attorneys should not require or suggest unduly restrictive identifications. See In re Sentry Chem. Co., 230 USPQ 556 (TTAB 1986) . Once the identification has been limited, it cannot be expanded later. See In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991) ; In re M.V Et Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991). Also, when requiring amendments to the identification, examining attorneys must advise applicants that additions that broaden the identification are not permitted.
1402.06(b) Clarifying the Identification of Goods and Services
Under 37 C.F.R. §2.71(a), an applicant may amend "to clarify" the identification of goods and/or services. The applicant may clarify an identification that is indefinite or overly broad to identify goods and/or services that are within the scope of the goods and services in the identification. As noted in TMEP §1402.06, filing an application for registration on the Principal Register establishes a constructive date of first use in commerce, contingent on issuance of the registration. 15 U.S.C. §1057(c). Accordingly, the applicant may not expand those rights through an amendment that broadens the identification of goods and/or services.
Thus, the applicant may amend from the more general to the specific, but the applicant may not amend from the specific to the more general. The scope of the goods/services identified initially, or as acceptably limited by an express amendment, establishes the outer limit for permissible amendments. See TMEP §§1402.07; In re Jimmy Moore LLC, 119 USPQ2d 1764 (TTAB 2016) .
In an application under §1 or §44 of the Trademark Act, classification may provide some guidance in determining whether an amendment exceeds the scope of the goods/services identified initially, but it is not controlling. In an application under §1 or §44, the examining attorney may suggest and accept amendments to the identification that result in a change of class, if the amended identification does not exceed the scope of the original identification.
Example - If an applicant has erroneously identified its goods and services as "menus" but, in fact, the applicant intends to register the mark for restaurant services, the applicant may not amend the identification to "restaurant services." In such a case, the original identification, which is specific and narrow in scope, may not be expanded to services beyond the scope of that identification.
Example - If an applicant has erroneously identified its goods and services as "bottles for salad dressing" but, in fact, the applicant intends to register the mark for salad dressing, the applicant may not amend the identification to "salad dressing." However, if an applicant identifies its goods and services as "bottles of salad dressing," the applicant may amend the identification to "salad dressing." As above, where the original language is specific and narrow in scope, the identification may not be expanded to goods beyond that scope.
Example - If an applicant has erroneously identified its goods and services either as "packaging and labels" or as "packaging and labels for toys" but, in fact, the applicant intends to register the mark for toys, the applicant may not amend to correct the identification, because "toys" is not within the scope of the initial identification.
In a §66(a) application, classification is assigned by the IB and may not be changed. 37 C.F.R. §2.85(d). See TMEP §§1401.03(d), 1402.01(c), and 1904.02(b) and (c) regarding §66(a) applications.