Trademarks > Trademark Examination Guides, Notes and Announcements > Examination Guide 3-08

Examination Guide 3-08
Examination Procedures for Identifications of Goods and Services in
Applications under Trademark Act Section 66(a) pursuant to the Madrid Protocol
Issued July 02, 2008

1. INTRODUCTION



2. BACKGROUND



3. EXAMINATION PROCEDURES



1. Classification



2. Identifications



1. Acceptable identifications of goods/services



2. Indefinite identification of goods/services with acceptable options within the scope of the class



3. Indefinite identification of goods/services that do not include any goods/services within the class



3. Examination of Proposed Amendments and Issuance of Final Requirements for an Acceptable Identification



4. Effect of Indicated Classes – No Precedential Value on Later Filed Applications



4. CORRECTIONS AND LIMITATIONS TO THE INTERNATIONAL REGISTRATION



1. Corrections



2. Limitations



3. Limitations vs. Amendments



5. APPENDIX – Identification of Goods and Services Examples

1. INTRODUCTION

   This examination guide outlines Office practice with respect to identifications of goods and services in applications under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), also known as applications under the Madrid Protocol.  The procedures discussed herein apply to the initial examination of such applications and the examination of corrections and limitations to the wording of the identification of goods and/or services issued by the International Bureau of the World Intellectual Property Organization (“the IB”).

2. BACKGROUND

   In applications under §66(a), the IB determines the classification assigned to goods and services encompassed by the international registration.Although the IB determines classification of the goods/services, for purposes of identification of the goods/services, the USPTO will examine a §66(a) application according to the same standards of specificity used in examining applications under Sections 1 and 44 of the Trademark Act. With respect to requests for extension of protection to the U.S., the assigned classes define the scope of the goods/services for the purposes of determining the extent to which the identification may be amended in accordance with 37 C.F.R. §2.71.

   The holder of an international registration is entitled to the benefits of extension of protection of that international registration to the United States, subject to the provisions relating to examination and opposition of Section 68 of the Trademark Act.  15 U.S.C. §1141e(a).  As the international registration is limited to those classes assigned by the IB, the identification therefore includes only those products or services falling within the identified classes.  To propose an amendment outside of the scope of the classes would result in the lack of a basis for registration of such goods/services under U.S. law. Thus, the USPTO will not issue a certificate of extension of protection for goods/services broader in scope than the international registration.

3. EXAMINATION PROCEDURES



1. Classification

   With respect to classification, the following types of amendments are not acceptable in an application under §66(a):

   • Changing the classification of goods/services from the classification assigned by the IB (the only instance in which classification in a §66(a) application can be altered is upon the receipt of a correction from the IB; see Section IV regarding IB corrections);
   • Adding a class to the application that is not the subject of a request for extension of protection to the United States; or
   • Transferring goods/services between classes in a multi-class application.

   To seek registration for goods/services, or a class of goods/services, for which protection was not originally requested, the §66(a) applicant must file a subsequent designation with the IB.  Madrid Protocol, Article 3ter(2); Guide to the International Registration of Marks under the Madrid Agreement and Protocol, B. II. 38.03.

2. Identifications

   The identification of goods/services must be specific, definite, clear, accurate, and concise.  See TMEP §1402.01 and cases cited therein.  The Office 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, 83 USPQ2d 1541 (Fed. Cir. 2007) (noting that the Office has discretion to require greater particularity than an entry in WIPO’s Alphabetical List of Goods and Services).

   Generally, there are three types of identifications: (1) acceptable identifications of goods/services; (2) indefinite identifications of goods/services with acceptable options within the scope of the class; and (3) indefinite identifications of goods/services that do not include any goods/services in the designated class. 

1. Acceptable identifications of goods/services

   When the identification of goods/services is definite in accordance with USPTO policies, the identification is acceptable, regardless of the class assigned.  If the goods/services are classified in accordance with the current edition of the Nice Agreement, no further requirements are necessary.  If the goods/services appear to be misclassified, the examining attorney must notify the “TM Madrid ID/Class” mailbox, and otherwise may proceed with examination, making no requirements of the applicant regarding the classification.

   With respect to acceptable goods/services that appear to be misclassified, if the examining attorney determines that the class would be proper were the goods/services amended with further clarifying language, the examining attorney may require such an amendment for further specificity to limit the identification to goods/services that are in  the class indicated in the international registration.  

2. Indefinite identification of goods/services with acceptable options within the scope of the class

   When the identification of goods/services is unacceptable as indefinite, and more specific language that identifies goods/services in the class can be suggested, the examining attorney must require amendment of the wording and advise the applicant that any proposed amendment must be within the scope of the class of the international registration.  The examining attorney should suggest acceptable identification(s) within the class.  Any proposed amendment must also be within the scope of the wording of the identification as originally written.

3. Indefinite identification of goods/services that do not include any goods/services within the class

   In the rare situation where the identification is indefinite, and there appear to be no goods/services that are within the scope of the identification as presently worded and also properly classified in the indicated class, the examining attorney must nevertheless require the applicant to submit an acceptably definite identification.  To be acceptable, any submitted amendment must be within the scope of the wording of the original goods/services.

   The examining attorney should explain that he/she is unable to suggest substitute wording.  The examining attorney may offer the applicant the option of deleting the unacceptable language from the application, but must not issue a requirement for the applicant to do so.  The examining attorney must notify the TM Madrid ID/Class mailbox of the serial number of the application and the goods/services at issue.  To the extent the general ID/Class mailbox specialist may be able to provide assistance in suggesting acceptable language within the scope of the indicated class, the examining attorney may contact the general ID/Class mailbox for such input.

3. Examination of Proposed Amendments and Issuance of Final Requirements For an Acceptable Identification

   If, in response to the Office action, an applicant proposes an amendment that (1) remains unacceptably indefinite; (2) is beyond the scope of the original wording; or (3) is beyond the scope of the class, the examining attorney must refuse to accept the amendment.  To the extent the proposed amendment raises no new issues and the application is otherwise in condition for a final action, the examining attorney must issue a final requirement for an acceptable identification.  

   The basis for refusing an unacceptably indefinite identification is the requirement for a list of “particular goods and services” in a complete application.  37 C.F.R. §2.32(a)(6).  Trademark Rule 2.71(a) provides the basis for the refusal of a proposed amendment that exceeds the scope of the originally identified goods/services, including wording beyond the scope of the class of the international registration.  The applicant is not bound by the scope of the language in the unacceptable amendment but, rather, by the language of the identification before the proposed amendment.  See TMEP §1402.07(d).  The examining attorney should also advise the applicant that the previous items listed in the existing identification (not the unacceptable substitute) remain operative for purposes of future amendment.  Once an applicant amends the identification of goods/services in a manner that is acceptable to the examining attorney, the amendment replaces all previous identifications, and thus restricts the scope of goods/services to that amended language.  See TMEP 1402.07(e). 

   The examining attorney may suggest but must not require – the applicant delete an unacceptable term or phrase or proposed goods/services that fall outside the scope of the class.  If deletion of an unacceptable identification would result in deletion of all goods/services from the §66(a) application, the examining attorney must not suggest that the applicant delete the unacceptable wording.  Instead, the examining attorney must continue to require an acceptable amendment, making the requirement final at the appropriate time.  To the extent the application contains acceptable goods/services that can be approved for publication, and would otherwise be in condition for a partial abandonment advisory, the examining attorney should indicate that if an acceptable response is not received, the unacceptable goods/services will be abandoned and the application will proceed with the acceptable items only.

   If it appears that there is an error in classification, the examining attorney may suggest the applicant contact the IB to request correction of or a limitation to the international registration.  The USPTO will not suspend prosecution of the application unless the applicant requests suspension in a timely response to an Office action and supports the request with a copy of the request for correction filed with the IB.  The applicant may also appeal the final identification requirement to the Trademark Trial and Appeal Board, or petition to the Director to review the requirement, if permitted by 37 C.F.R. §2.63.
   

4. Effect of Indicated Classes – No Precedential Value on Later Filed Applications

   Because the IB determines classification assigned to goods and services encompassed by the international registration, and because registered extensions of protection may be based upon international registrations issued under previous editions of the Nice Agreement, the assigned classes in registered extensions of protection will not be considered as controlling in any later-filed U.S. applications to the extent such classification is contrary to USPTO policy.  The classification of goods/services in registered extensions of protection and published applications under §66(a) is only relevant to the particular goods and services identified therein, and should not be relied upon in other applications to support classification or identification of goods or services that are otherwise unacceptable under current USPTO practice.  See TMEP §1402.14.

4. CORRECTIONS AND LIMITATIONS TO THE INTERNATIONAL REGISTRATION



1. Corrections

   When the IB determines that there is an error concerning an international registration in the International Register, it corrects that error ex officio.  Requests for correction may be submitted to the IB by the holder (i.e., a §66(a) applicant seeking protection in U.S.), the Office of origin of the international application, or in some cases by the USPTO Administrator for Identification and Classification.

   Corrections that merely reclassify the originally identified goods/services may be accepted; however, any indefinite wording of the identification of such goods/services that was acceptably amended during the course of USPTO examination will remain as amended, that is, the amended wording is not affected or changed by the correction issued by the IB.  When an applicant amends the identification of goods/services in a manner that is acceptable to the examining attorney, including by voluntarily deleting goods/services, the amendment replaces all previous identifications, and thus restricts the scope of goods/services to that amended language.  See TMEP 1402.07(e). 

2. Limitations

   The holder of an international registration may record a limitation of the good/services, which may affect some or all of the designated Contracting Parties. Upon recordation, the IB will notify the USPTO if the U.S. is affected by the limitation. The recording of a limitation does not remove the goods/services concerned from the international registration, but simply narrows the goods/services for which the holder seeks protection in the particular countries affected.

   A limitation may set forth particular goods/services narrower in scope than the goods/services as identified in the international registration. For example, the international registration may identify “clothing” but the holder limits the goods to “sweaters and pants” with respect to the U.S.  Upon notification by the IB, the USPTO may declare that the limitation has no effect in the U.S. if the examining attorney considers that the change requested is not in fact a limitation but an expansion of the list of goods/services, or is otherwise unacceptable. Continuing with the example of “clothing” in the international registration, if a limitation were to specify “sweaters and hair bows,” the examining attorney must refuse the limitation with respect to “hair bows” as being an expansion of the scope of the goods of the international registration.

3. Limitations vs. Amendments

   To the extent that an amendment of the identification in a §66(a) application narrows or restricts the goods/services, an amendment is comparable to a limitation affecting only the U.S.  A limitation filed at the IB by the applicant clarifying the nature of the goods/services may render the identification of goods/services in the §66(a) application sufficiently definite.  Nevertheless, if the examining attorney has issued an Office action requiring amendment of the identification of goods/services, a proper response to the Office action must be received in the allowed time period.  Simply recording a limitation with the IB is not a response to an Office action.  The applicant must file a response with the Office within six months of the mailing date, and state that the applicant has recorded a limitation that will resolve the outstanding issue(s).

   See TMEP §1906.01(e) regarding the filing of a request to record a limitation with the IB.  See TMEP §1904.03(g) regarding limitations in pending §66(a) applications, and TMEP §1904.15 regarding limitations in registered extensions of protection to the United States.

5. APPENDIX

1. Acceptable identifications of goods/services

   EXAMPLES

   Goods are identified as “footwear” in Class 25.  The wording is definite and the IB has assigned the correct class.  No action necessary.

   Services identified as “legal services,” but the IB has assigned Class 42.  The wording is definite, but the class is not consistent with the current edition of the Nice Agreement.  No action is necessary except to send TM Madrid ID/Class an email indicating the serial number and the services at issue.

   Goods are identified as “tobacco,” but the IB has assigned Class 35.  The Alphabetical List of the Nice Agreement classifies such goods in Class 34.  The examining attorney will accept the goods in the assigned class, and email the TM Madrid ID/Class mailbox with the serial number of the application.

   Goods are identified as “pasta,” but the IB has assigned Class 3. The Alphabetical List of the Nice Agreement classifies such goods in Class 30.  The examining attorney will accept the goods in the assigned class, and email the TM Madrid ID/Class mailbox with the serial number of the application.         

2. Indefinite identification of goods/services with acceptable options within the scope of the class indicated

   EXAMPLES

   Goods are identified as “headgear” in Class 25.  Requirement for greater specificity is issued, offering suggestions for more narrowly identified goods in Class 25, such as “headgear, namely hats, beanies, bathing caps.”  The examining attorney should not suggest items within the scope of “headgear” that are not in Class 25, such as “helmets” in Class 9 or “headgear for orthodontic appliances” in Class 10.  The Office action must include an advisory that only goods within the scope of the IB-assigned class will be accepted.       

   Services are identified as “consultation services” in Class 36.  Requirement for more specificity is issued, offering suggestions for more narrowly recited services in Class 36, such as “banking consultation,” or “credit consultation,” or “financial consultation.”  The Office action must include an advisory that only services within the scope of the IB-assigned class will be accepted.

   The goods are identified as “video games” in Class 28.   The examining attorney may suggest the applicant adopt “hand held unit for playing video games” or “stand alone video game machines” or “arcade-type electronic video games” in Class 28.  Any proposed amendment including goods in the nature of “Video game software” or “video game machines for use with external display screens” (both are Class 9 items under the current edition of the Nice Agreement) would be outside of the scope of the goods covered by the international registration, and such an amendment must be refused.  The Office action must include an advisory that amendments may only include goods within the scope of the class assigned by the IB.

3. Indefinite identification of goods/services that do not include any goods/services within the class indicated

   EXAMPLES

   The services are identified as “food services” in Class 36.  Such services are too broad, yet do not encompass any services that currently would be properly classified in Class 36, as restaurant services and other similar food and beverage services are in Class 43.   The examining attorney need not make any suggestions as to acceptable wording, but must require the applicant to amend the recitation within the scope of services properly classified in Class 36 in accordance with the current edition of the Nice Agreement, and notify TM Madrid ID/Class of the serial number.

   The goods are identified as “engine pumps” in Class 12.  Such goods are too broad, yet do not encompass any goods that currently would be properly classified in Class 12, as water and oil pumps for land vehicle engines are in Class 7.  The examining attorney need not make any suggestions as to acceptable wording, but must require the applicant to amend the identification within the scope of goods properly classified in Class 12 in accordance with the current edition of the Nice Agreement, and notify TM Madrid ID/Class of the serial number.

 

KEY: =online business system =fees =forms=help =laws/regulations =definition (glossary)

Call the Trademark Assistance Center for help on trademark matters. Send questions about USPTO programs and services to the USPTO Contact Center (UCC). You can suggest USPTO webpages or material you would like featured on this section by E-mail to the webmaster@uspto.gov . While we cannot promise to accommodate all requests, your suggestions will be considered and may lead to other improvements on the website.