1402.05 Accuracy of Identification
An identification is unacceptable if it is inconsistent with the goods or services indicated by the specimens or if the ordinary meaning of the identification language is at variance with the goods or services evidenced by the specimens or any other part of the record.
The examining attorney may require an amendment of the identification language to accurately describe the goods or services. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (affirming decision that the examining attorney properly required amendment of the term "chronographs" in the identification of goods so that proper classification could be determined); In re Faucher Indus. Inc., 107 USPQ2d 1355, 1361 (TTAB 2013) (finding that examining attorney properly questioned the nature of the goods and required that the identification of goods be amended to disclose the material composition of the goods so that proper classification could be determined). Moreover, the examining attorney must require an amendment to the identification language when it includes broad wording that would normally be acceptable, but the specimen(s) shows that the actual goods or services are a specialized type or are used only in a specialized trade channel. In this situation, the identification would be misleading. The amended identification should specify the specialized characteristic or specialized trade channel to accurately describe the goods or services. In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1335 (TTAB 2009) (Board stating that "[t]he Office’s requirement that the examining attorney ensure the accuracy of the identification of goods is abundantly clear."); In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980) , aff’g 204 USPQ 261 (TTAB 1979) (examining attorney has discretion to require applicant to state whether goods are packaged in container to which mark refers); Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 236 F.2d 423, 111 USPQ 105 (C.C.P.A. 1956) (requirement to restrict identification to "outboard motors" considered proper); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505, 509 (TTAB 1972) , modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974) (noting that, in view of specimens, greater specificity should have been required in identifying registrant’s detergent product); In re Toro Mfg. Corp., 174 USPQ 241 (TTAB 1972) (noting that use on "grass-catcher bags for lawn-mowers" did not justify the broad identification "bags," which would encompass goods diverse from and commercially unrelated to applicant’s specialized article); Ex parte Consulting Engineer Publishing Co., 115 USPQ 240 (Comm’r Pats. 1957) (amendment of "periodical" to "monthly news bulletin" required).
In Petroglyph Games, 91 USPQ2d at 1336, the Board addressed the question of whether the identification "computer game software" was accurate for the mark BATTLECAM if the mark was being used only for a feature of a computer game. The Board found that the subsets of computer code identified by the mark, which the specimen indicated supported only particular aspects or features of the computer game, could also be accurately identified as "computer game software," noting that although "there is a market for selling or distributing to computer game players all the software that allows a game to be played in its entirety, there may also be a market for computer game software related to only certain game features, perhaps among game developers or producers who might want to include a particular feature in a complete game, or perhaps among players seeking after-market add-ons or enhancements for existing games." Therefore, it would not be inaccurate to identify such software simply as "computer game software." For information regarding identifying and classifying software goods pursuant to NCL 11-2019, see TMEP §1402.03(d).
The wording of an identification cannot be amended to accurately describe the goods or services if the amendment would add to or expand the scope of the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07 et seq.
See TMEP §1402.13 regarding requirements to amend a portion of the identification of goods/services.
1402.05(a) Goods That Are Components or Ingredients
When a mark is used to identify only a component or ingredient of a product, and not the entire product, the identification must (1) precisely set forth the common name of the component or ingredient, (2) indicate that the component or ingredient is sold as a component or ingredient of another finished product, and (3) set forth the common name of the finished product of which the identified component or ingredient forms a part, e.g., "acoustic baffles sold as a component of loudspeakers." In other words, when the specimen or other material in the record clearly indicates that the mark relates only to a distinguishable component or ingredient of a finished product, then the application should identify that component or ingredient as the goods rather than the finished product. The identification should leave no doubt that the mark refers only to the component or ingredient and not to the entire product. See, e.g., Ex parte Joseph & Feiss Co., 114 USPQ 463 (Comm’r Pats. 1957); Ex parte Palm Beach Co., 114 USPQ 463 (Comm’r Pats. 1957). For example, if a mark is used on a label for fiber-optic cables to identify only the optical fibers that are components of the cables, "optical fibers sold as a component of fiber optical cables" would be an acceptable identification to accurately identify the goods.
The examining attorney should examine the specimen to determine whether it shows use of the mark to identify the separate component or ingredient or the finished product in its entirety. See In re Fallon, 2020 USPQ2d 11249, at *5 (TTAB 2020) (citing In re Minerva Assocs., Inc., 125 USPQ2d 1634, 1638-39 (TTAB 2018) (noting "it is particularly important that the specimen contain some visual or verbal identification of the component to create the required direct association between the mark and the identified goods")).
Components or ingredients sold as part of a finished product are classified in the class of the finished product, since the components or ingredients have been incorporated into other finished goods.
Example – The identification of goods lists "glass door lites," in Class 19. (Glass door lites are glass panes for installation into doors.) The specimen is a label for a metal door which shows use of the mark to identify a particular component of the door, while the door itself is identified by a different mark. As the mark for which registration is sought identifies a component of a finished product and not a separate finished product, the identification must specify that the goods are "glass door lites sold as components of metal doors," and the proper classification is that of "metal doors," namely, Class 6.
If the mark does not pertain solely to a component or ingredient rather than the finished or composite product, the identification should not specify the component or ingredient as the goods.
Components or ingredients used for the manufacture of other finished products that are sold separately from the finished products are classified in the class of the specified components or ingredients, since the components or ingredients have not yet been transformed into the finished goods.
The same rules of language construction for purposes of amendment, as set forth in TMEP §§1402.01 et seq., 1402.06 et seq., and 1402.07 et seq., apply to amendments of identifications to indicate components or ingredients. Thus, whether an identification may be amended will depend on the particular circumstances of each application.
Example - The indefinite term "fabric" may be amended to the definite identification "upholstery fabric sold as an integral component of finished furniture" but may not be amended to "furniture," which is beyond the scope of the identification.
See TMEP §1402.05 regarding accuracy of the identification.
1402.05(b) Material Composition
According to the General Remarks of the Nice Classification, unworked or semi-worked raw materials are in principle classified according to their material composition. See TMEP §1401.02(a). For example, "unworked or semi-worked gold" is classified in Class 14 and "raw or semi-worked rubber" is classified in Class 17.
The General Remarks of the Nice Classification also provide the following guidance on the classification of finished goods:
A finished product is in principle classified according to its function or purpose. If the function or purpose of a finished product is not mentioned in any class heading, the finished product is classified by analogy with other comparable finished products, indicated in the Alphabetical List. If none is found, other subsidiary criteria, such as that of the material of which the product is made or its mode of operation, are applied.
TMEP §1401.02(a) (emphasis added). If an identification of goods is specific, but the goods could be classified in more than one class depending on the material composition, then the material composition must be indicated in the identification of the goods.
Example - "Statues" refers to specific items; however, the classification depends on the material composition. "Statues of non-precious metal" are classified in Class 6; "statues of precious metal" are classified in Class 14; "statues of wax, wood, plaster, or plastic" are classified in Class 20; and "statues of glass" are classified in Class 21.
However, in certain situations, because of the nature of the particular industry and the knowledge that the items are made out of different materials and are classified accordingly, an indication of the material composition in the identification may be unnecessary. See TMEP §§1401.07 and 1402.03 for further explanation.
When goods, whether finished or not, are classified according to material composition, and the goods are made of more than one material, the goods are classified according to the material that predominates. See Nice General Remarks in TMEP §1401.02(a). The identification must clearly set forth the primary material composition of the goods for proper classification.
Example - "Statues primarily of precious metal and also including glass" are classified in Class 14 because the primary composition is precious metal, and statues of precious metal are classified in Class 14.
Example - "Statues primarily of glass and also including precious metal" are classified in Class 21 because the primary composition is glass, and statues of glass are classified in Class 21.