1401.10 Effective Date of Changes to USPTO ID Manual
In the ID Manual, the "Effective Date" indicates the date on which the status (i.e., Added, Modified, Example, or Deleted) of a particular entry went into effect. When the Effective Date changes, the new requirements established by that particular entry apply only to applications filed on or after the date of the change. However, marks registered to an entity other than applicant may not be used in identifications of goods and services regardless of the Effective Date of an ID Manual entry. For additional information regarding the use of trademarks in an identification, see TMEP §1402.09.
Users of the ID Manual may view the "Version History" of particular entries by clicking on the "Term ID" value for an entry. The "Version History" tab will list the Start and End Effective Dates of any previous descriptions and/or classifications of the good or service. The "Notes" for a particular entry will also describe modifications and reclassifications of particular goods/services along with short explanations for such actions.
In a §1 or §44 application filed before the effective date of the entry, the examining attorney may give the applicant the choice to either keep the existing identification and/or class or amend to the new identification, modified description, and/or class. However, if an applicant chooses to comply with the new identification, modified description, and/or class, the applicant must pay the fees for any added class(es) resulting from the change. 37 C.F.R. §2.6(a)(1).
Example: In a §1 application filed on December 1, 2016, the applicant identifies goods in the nature of "metal key rings" in International Class 6. Effective January 1, 2017, "metal key rings" are reclassified to International Class 14. When examining the application in March 2017, the examining attorney may offer the applicant the option of keeping "metal key rings" in International Class 6 or reclassifying them in International Class 14, so long as sufficient fees are paid for any class(es) added to the application.
In a §1 or §44 application filed before the effective date of the entry in which an Office action was issued before the effective date, and the requirement relating to the identification and/or class made in that Office action is inconsistent with the new or modified entry, the applicant may elect to comply with the previously issued requirement or amend to the new identification, modified description, and/or class. The applicant must pay the fees for any added class(es) resulting from the change. 37 C.F.R. §2.61(a)(1).
Example: In a §44 application filed on September 1, 2016, the applicant identifies goods in the nature of "broom handles" in International Class 6. In an Office action dated December 1, 2016, the examining attorney requires the applicant to specify the goods are "broom handles of metal" in International Class 6 or "non-metal broom handles" in International Class 20. Effective January 1, 2017, the entry "broom handles" was added to the ID Manual in International Class 21 as the NCL 11-2017 classifies all "broom handles" in International Class 21. The applicant may elect either to comply with the original requirement to clarify the material composition of the goods and classify accordingly, or to reclassify "broom handles" to International Class 21. In either case, the applicant must pay the fees for any added class(es).
However, an applicant cannot choose to have some goods or services in its application comply with one edition/version of the Nice Agreement and other goods or services comply with the requirements of a different edition/version.
Example: An application filed on December 1, 2016 under §1 and §44 includes "nutcrackers" and "ice tongs" in Class 8, the appropriate classification under NCL 10-2016. Under NCL 11-2017 (in effect January 1, 2017), "nutcrackers" and "ice tongs" are classified in Class 21. On or after January 1, 2017, applicant may choose to comply with the new edition/version. However, applicant may not elect to move "nutcrackers" to Class 21 (pursuant to the NCL 11-2017 classification) and retain "ice tongs" in Class 8 (pursuant to the NCL 10-2016 classification).
For information on the implementation of changes to the Nice Agreement, see TMEP §1401.09.
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. TMEP §1402.01(b). Applications filed with a priority claim under §44(d) must comply with the guidance set forth in the ID Manual in effect on the filing date of the application, rather than the priority date.
Example: An application filed on January 1, 2020 under §44(d), with a priority date of December 1, 2019, includes "dried flowers" in Class 31. "Dried flowers" appeared as an acceptable entry in the ID Manual from April 2, 1991 through December 31, 2019, but was deleted from the ID Manual, effective January 1, 2020, because it is indefinite under NCL 11-2020. Although "dried flowers" was acceptable in Class 31 on the priority date, the identification must be amended because it is unacceptable under the USPTO identification policy in effect on applicant’s filing date and may encompass, for example, "edible dried flowers" in Class 29 and "dried flowers for decoration" in Class 31.
Applications filed under §44(e) also must comply with the guidance set forth in the ID Manual in effect on the filing date of the application, rather than the date of the foreign registration. Id.
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); TMEP §1402.07(e).
See TMEP §1401.10(a) regarding the effective date of changes to the ID Manual in connection with §66(a) applications.
1401.10(a) Effective Date of USPTO ID Manual Entries for Applications Filed Under §66(a)
In a §66(a) application, the IB controls the classification of goods and services. See TMEP §1904.02(b). The IB uses the edition of the Nice Agreement in effect at the time international registration is sought to classify the goods and services. See TMEP §1904.02(c)(v). The only instance in which classification in a §66(a) application may be modified is upon the receipt of a correction from the IB. See TMEP §§1904.02(b) and 1904.02(e)(i).
Although the IB determines the classification of the goods/services, the USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods or services covered by the mark. In re Omega SA, 494 F.3d 1363, 1365, 83 USPQ2d 1541, 1543 (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). A request for extension of protection of a registration to the United States under §66(a) must comply with USPTO identification policies and practices in effect on the "filing date" of the extension request. See TMEP §1904.01(b) for the distinction between the filing date for a request for extension of protection made in an international registration and the filing date for a request for extension of protection made in a subsequent designation.
Although the IB uses the edition of the Nice Agreement in effect at the time international registration is sought to classify the goods and services, the USPTO determines the degree of particularity or specificity needed to clearly identify the goods or services based on policies in effect on the filing date of the extension request. The identification policies in effect on the filing date of the extension request may be based on a different edition/version of the Nice Agreement than used by the IB for classification purposes. Nevertheless, the identification must be reviewed for compliance with identification policies in effect on the filing date of the extension request.
Example: "Bath salts [non-medicated]" appeared as an acceptable entry in the ID Manual in Class 3 from April 2, 1991 through December 31, 2016. On January 1, 2017, "Bath salts [non-medicated]" was deleted from the ID Manual because it is broad enough to encompass "bath salts for medical purposes" in Class 5 and "bath salts, not for medical purposes" in Class 3. If the USPTO receives a §66(a) application for "bath salts" in Class 3 with a filing date that is on or after January 1, 2017, the examining attorney must require the applicant to amend the wording "bath salts" to specify a purpose appropriate to Class 3 (e.g., "bath salts, not for medical purposes"), per the ID Manual guidance in effect on the filing date of the request for extension of protection to the United States. The identification must be amended even if it was acceptable under the edition/version used by the IB for classification purposes, because it is unacceptable under USPTO identification policy at the time of filing.
Identifications filed under §66(a) that include a priority date should also be reviewed for compliance with USPTO identification specificity requirements in effect on the filing date, rather than the priority date.
Example: A §66(a) application with a filing date of February 12, 2019 and a priority date of December 31, 2018 includes the identification "computer game software" in Class 9. The IB used NCL 11-2018 to classify the goods in Class 9. Effective January 1, 2019, USPTO policy requires that identifications for software must indicate that the goods are recorded or downloadable for classification in Class 9. "Computer game software" was an acceptable identification on the priority date; however, it is not acceptable on applicant’s filing date of February 12, 2019. The identification must be amended to indicate that the goods are recorded or downloadable to comply with USPTO identification policy in effect on applicant’s filing date.
Any proposed amendment to the identification must be within the scope of the goods/services in the class assigned by the IB. See TMEP §1904.02(c)(ii).