1104.10(b)(iii) Identification of Goods/Services
The examining attorney must examine the identification of goods/services in an amendment to allege use to ensure that it conforms to the goods/services specified in the application. The applicant may delete, limit, or clarify the goods/services, but may not add to or expand the identification. 37 C.F.R. §2.71(a). The amendment to allege use must specify all the goods/services for which the applicant seeks registration under §1(a), by listing or incorporating by reference the goods/services on or in connection with which the mark is in use in commerce. See 37 C.F.R. §2.76(b)(1)(iv). To incorporate the goods/services in the application by reference, the applicant may elect the TEAS form option that states that "the mark is in use in commerce on or in connection with all of the goods/services, or to indicate membership in the collective organization listed in the application or Notice of Allowance or as subsequently modified for this specific class." The form requires the applicant to designate the goods/services for each class for which use is being asserted.
If goods/services identified in the application are omitted from the amendment to allege use and it is not accompanied by a request to divide, the omitted goods/services must be deleted from the application and the amendment to allege use accepted. However, if an amendment to allege use is submitted for only some of the goods/services and the applicant specifies an intention to retain the goods/services not yet in use, the amendment to allege may not be accepted until a request to divide the goods/services that are not in use is filed. See 37 C.F.R. §2.76(a)(2); TMEP §1104.03(a).
If the amendment to allege use includes an amended identification of goods/services, to determine whether the amended identification is acceptable and within the scope of the previous identification, the amended identification must be examined in relation to the last acceptable identification of record. TMEP §1402.07(d), (e). When the amended goods/services exceed the scope of a previous acceptable identification, the amended goods/services must be refused. If both an amendment to allege use and a response to an outstanding Office action are received and the two filings contain different amendments to the identification of goods/services, this creates an ambiguity that must be clarified by the applicant.
1104.10(b)(iii)(A) Identification of Nature of Collective Membership Organization
The examining attorney must ensure that the identification of the nature of the collective membership organization in an amendment to allege use conforms to that specified in an application for a collective membership mark. The applicant may delete, limit, or clarify the description of the collective membership organization, but may not add to or expand the identification. See 37 C.F.R. §2.71(a). See TMEP §1304.02(c) regarding identifications in applications for collective membership marks.