Specifying the Goods and/or Services - in General

A written application must specify the particular goods

and/or services on or in connection with which the applicant uses, or has a bona fide

intention to use, the mark in commerce.

15 U.S.C.

§1051(a)(2)

,

(b)(2)

;

37 C.F.R.

§2.32(a)(6)

.  To "specify" means to name in an explicit manner.

The identification should set forth common names, using terminology that is generally

understood.  For goods or services that do not have common names, the applicant should

use clear and succinct language to describe or explain the item.  Technical or esoteric

language and lengthy descriptions of characteristics or uses are not appropriate.

The language used to describe goods and/or services

should be understandable to the average person and should not require an in-depth

knowledge of the relevant field.  An identification may include terms of art in a

particular field or industry that are definite and limited to a single class, but, if

these terms are not widely understood by the general population, the identification

should include an explanation of the specialized terminology.

"The identification of goods and/or services must be

specific, definite, clear, accurate, and concise."

In re Carlton Cellars,

LLC

, 2020 USPQ2d 10150, at *3 (TTAB 2020) (citing

In re Societe

Generale des Eaux Minerales de Vittel S.A.

, 1 USPQ2d 1296 (TTAB 1986),

rev’d on other grounds

, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir.

1987));

see

In re tapio GmbH

, 2020 USPQ2d 11387, at *6 (TTAB 2020) (quoting

In re Cordua Rests., Inc.

, 823 F.3d 594, 605, 118 USPQ2d 1632,

1639 (Fed. Cir. 2016)).

"[The] applicant must identify the goods and services

specifically to provide public notice and to enable the USPTO to classify the goods and

services properly and to reach informed judgments concerning likelihood of confusion

under

15 U.S.C. §1052(d)

."

In re SICPA Holding SA

,

2021 USPQ2d 613, at *4 (TTAB 2021) (quoting

In re Fiat Grp. Mktg. & Corp.

Commc’ns S.p.A.

, 109 USPQ2d 1593, 1597 (TTAB 2014);

In re Faucher

Indus.

, 107 USPQ2d 1355, 1358 (TTAB 2013))

ly to provide public notice and to enable the USPTO to classify the goods and

services properly and to reach informed judgments concerning likelihood of confusion

under

15 U.S.C. §1052(d)

."

In re SICPA Holding SA

,

2021 USPQ2d 613, at *4 (TTAB 2021) (quoting

In re Fiat Grp. Mktg. & Corp.

Commc’ns S.p.A.

, 109 USPQ2d 1593, 1597 (TTAB 2014);

In re Faucher

Indus.

, 107 USPQ2d 1355, 1358 (TTAB 2013)). "An identification that fails

to identify the goods and services with specificity is indefinite, either because the

nature of the goods or services is not clear or because the wording is so broad that it

may include goods or services in more than one class."

In re Carlton Cellars,

LLC

, 2020 USPQ2d 10150, at *3. 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 Black Card, LLC

, 2023 USPQ2d 1376, at *11

(TTAB 2023) (quoting

In re Omega SA

, 494 F.3d 1362, 1365, 83 USPQ2d

1541, 1544 (Fed. Cir. 2007));

In re SICPA Holding

, 2021 USPQ2d 613,

at *4.

As indicated above, an identification should set forth

the common name of a good or service using terminology that is generally understood.

Wording such as "included in this class" is not the common name of particular goods or

services and would not be understood by those unfamiliar with the Nice Classification.

If an identification includes wording such as "included in this class," "belonging in

this class," "excluding goods/services in other classes," or the like, the examining

attorney will require the applicant to delete such wording because it does not identify

a particular good or service.

The identification itself must not include references to

specific class numbers. Examining attorneys may delete wording related to the class

number from the identification by no-call examiner’s amendment and must ensure that such

wording is removed from the identification prior to approving a mark for publication or

registration

ch wording because it does not identify

a particular good or service.

The identification itself must not include references to

specific class numbers. Examining attorneys may delete wording related to the class

number from the identification by no-call examiner’s amendment and must ensure that such

wording is removed from the identification prior to approving a mark for publication or

registration. See

TMEP §707.02

regarding examiner’s amendments

without prior authorization. See generally

TMEP §817

regarding

preparation of an application for publication or registration.

Terminology that includes items in more than one class is

considered indefinite, even with such additional wording as "included in this class" at

the end of the identification.

See

In re Omega SA

, 494 F.3d at 1365, 83 USPQ2d at 1544 ("chronographs"

includes both time recording devices in Class 9 and watches in Class 14; merely

classifying the goods in only one of the classes does not preclude a requirement for

further specificity in the identification).

Example

:  "Blankets" is not acceptable without qualifying wording

because it is not particular enough to identify the kind of blanket on which the mark

is used, e.g., fire blankets (Class 9), electric blankets for household purposes

(Class 11), horse blankets (Class 18), and bed blankets (Class 24).

Example:

"Insulin injectors" is

not acceptable because appropriate classification of the goods depends upon whether

the injectors are sold filled with insulin or sold empty. Generally, goods that are

sold filled with another item are classified in the class of the goods with which

they are filled. Thus, "insulin injectors sold filled with insulin" are classified in

Class 5, the class of the insulin with which the injectors are filled, while "insulin

injectors sold empty" are classified in Class 10, the general class for medical

apparatus

ed with insulin or sold empty. Generally, goods that are

sold filled with another item are classified in the class of the goods with which

they are filled. Thus, "insulin injectors sold filled with insulin" are classified in

Class 5, the class of the insulin with which the injectors are filled, while "insulin

injectors sold empty" are classified in Class 10, the general class for medical

apparatus. Similarly, "powder compacts" is not acceptable because it encompasses both

"powder compacts sold empty" in Class 21 and "compacts sold filled with cosmetic

powder" in Class 3.

However, the conclusion that a term would clearly include

items classified in more than one class should not be drawn unless reasonable, in light

of the evidence of record.

See

In re Thor Tech,

Inc.,

85 USPQ2d 1474

(TTAB 2007) ("park trailer" held to be an acceptable identification, where the

applicant’s evidence showed that it is a term of art generally understood by those in

the industry and by consumers as a designation for a type of recreational vehicle, which

unambiguously places it in Class 12; Board was not persuaded by the examining attorney’s

argument that the identification  was indefinite because it could also encompass mobile

homes in Class 19.).

In applications based on a single filing basis, each good

or service should be listed only once in the identification. If an application is based

on multiple filing bases, the identification should list each good or service only once

for each applicable basis. See

TMEP §806.02(a)

regarding the procedure for asserting more than one filing basis. Redundancies in the

identification of goods or services may be corrected by no-call examiner’s amendment.

See

TMEP

§707.02

.

The accuracy of identification language in the original

application is important because the identification cannot later be expanded.

Fender Musical Instruments Corp. v. Win-D-Fender, LLC

, 2023 USPQ2d

61, at *3 (TTAB 2023);

see

37

C.F.R. §2.71(a)

;

In re M.V Et Associes

, 21

USPQ2d 1628, 1630 (Comm’r Pats

on of goods or services may be corrected by no-call examiner’s amendment.

See

TMEP

§707.02

.

The accuracy of identification language in the original

application is important because the identification cannot later be expanded.

Fender Musical Instruments Corp. v. Win-D-Fender, LLC

, 2023 USPQ2d

61, at *3 (TTAB 2023);

see

37

C.F.R. §2.71(a)

;

In re M.V Et Associes

, 21

USPQ2d 1628, 1630 (Comm’r Pats. 1991);

TMEP §§1402.06-1402.06(b)

,

1402.07-1402.07(e)

.

See

TMEP

§1306.02(c)

regarding the identification of goods and services

in certification mark applications and

§1304.02(c)

regarding identification language in collective

membership mark applications.