Specificity of Terms Used in Identifying Goods and Services

Applicants frequently use broad terms to identify the

goods or services in an application.  In applications based solely on §1(a),

15

U.S.C. §1051(a)

,  the applicant must have used the mark in

commerce on all of the goods and/or services as of the application filing date.

See

First Int’l Services Corp. v. Chuckles, Inc.

, 5 USPQ2d 1628 (TTAB

1987).  In applications filed under §1(b),

15 U.S.C.

§1051(b)

, and §44,

15 U.S.C.

§1126

,  the applicant must assert a bona fide intent to use the

mark in commerce on or in connection with the specified goods and/or services as of the

application filing date.

37 C.F.R.

§2.33(b)(2)

. In an application filed under §66(a),

15

U.S.C. §1141f(a)

, the verified statement is part of the

international registration on file at the IB, and must allege that the applicant/holder

has a bona fide intention to use the mark in commerce with the goods/services identified

in the international application or subsequent designation.

37 C.F.R.

§2.33(e)(1)

. The requirement for use or a bona fide intent to use

is not necessarily violated by broad identifying terms.  When a mark is used on a number

of items that make up a homogeneous group, a term that identifies the group as a whole

would be understood as encompassing products of the same general type that are

commercially related.

As long as a broad term identifies the goods or services

that are intended to be covered with reasonable certainty, it will be reasonable, from a

commercial viewpoint, to consider that the mark has been used for all the related goods

or services that fall in the designated group.

See

In re Dynamit Nobel

AG,

169 USPQ 499

(TTAB 1971) ("ammunition" permitted because its scope was assumed to be understood);

In re Port Huron Sulphite & Paper

Co.

, 120 USPQ 343

(TTAB 1959) ("paper other than board papers" approved because of evidence of actual

use on various types of paper)

sider that the mark has been used for all the related goods

or services that fall in the designated group.

See

In re Dynamit Nobel

AG,

169 USPQ 499

(TTAB 1971) ("ammunition" permitted because its scope was assumed to be understood);

In re Port Huron Sulphite & Paper

Co.

, 120 USPQ 343

(TTAB 1959) ("paper other than board papers" approved because of evidence of actual

use on various types of paper).

Where an applicant has identified its goods or services

very broadly but does not use the mark on a substantial number of related goods/services

encompassed by the identification language, the USPTO may require further

specificity.

The examining attorney must consider the following

guidelines:

(1) Terminology that includes items in more than one

class is considered indefinite (e.g., "artists’ materials"), even with such

additional wording as "included in this class" at the end of the identification.

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).  Other examples are "blankets," which include

such diverse and differently classified types as bed blankets in Class 24, fire

blankets in Class 9, and horse blankets in Class 18; "boxes," which include

set-top boxes and junction boxes in Class 9, music boxes in Class 15, and boxes

for holding things, which are classified according to their material compositions;

and "sports equipment," because the nature of the equipment will determine the

class, e.g., football helmets would be in Class 9, football uniforms would be in

Class 25, and footballs would be in Class 28.  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

"sports equipment," because the nature of the equipment will determine the

class, e.g., football helmets would be in Class 9, football uniforms would be in

Class 25, and footballs would be in Class 28.  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).

See

TMEP §1402.05(b)

regarding goods that may be classified

in more than one class depending on their material composition.

(2) Some terminology is sufficient for purposes of

according a filing date but too indefinite to enable proper examination.  For

example, in

In re Societe Des Parfums

Schiaparelli, S.A.

, 122 USPQ 349, 350

n.4 (TTAB 1959) , clarification of the term "beauty products" was held to be

necessary because the term does not have a particular commercial meaning.  In such

a situation, the examining attorney may seek further information under

37 C.F.R. §2.61(b)

.

See

TMEP

§814.

te but too indefinite to enable proper examination.  For

example, in

In re Societe Des Parfums

Schiaparelli, S.A.

, 122 USPQ 349, 350

n.4 (TTAB 1959) , clarification of the term "beauty products" was held to be

necessary because the term does not have a particular commercial meaning.  In such

a situation, the examining attorney may seek further information under

37 C.F.R. §2.61(b)

.

See

TMEP

§814.

(3) In rare instances, an identification may include a

term that has multiple, entirely different meanings.  If the meaning of such a

term can be understood when read in association with the title of the class in

which it is placed, and if the term is otherwise satisfactory, the examining

attorney need not require amendment to further qualify the term.  The limited

number of items to which this applies, however, represents a narrow exception to

the general rule that an identification must itself provide a clear indication of

the nature of the goods or services, without reference to the class.

See

TMEP

§§1402.01

and

1402.05(b)

.  The title of a

class cannot be used to define the nature of the goods when the same item could be

classified in more than one class depending on its function, material composition,

or field of use.

See

In re Omega SA,

494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007)

(finding that "chronographs" includes both chronographs that function as time

recording devices in Class 9 and chronographs that function as watches in Class

14).

(4) The common understanding of words or phrases used

in an identification determines the scope and nature of the goods or services.

In re Fiat Grp. Mktg. &

Corporate Commc'ns S.p.A.,

109 USPQ2d 1593

(TTAB 2014);

TMEP §1402.07(a)

.

A basic and widely available dictionary should be consulted to determine the

definition or understanding of a commonly used word.

that function as watches in Class

14).

(4) The common understanding of words or phrases used

in an identification determines the scope and nature of the goods or services.

In re Fiat Grp. Mktg. &

Corporate Commc'ns S.p.A.,

109 USPQ2d 1593

(TTAB 2014);

TMEP §1402.07(a)

.

A basic and widely available dictionary should be consulted to determine the

definition or understanding of a commonly used word.

(5) Many goods are commonly understood to move in a

particular channel of trade or have particular attributes.  When those goods are

classified in the class that is appropriate for that common understanding, often

no further specification as to the nature of those goods is necessary.  However,

when the goods have a special use or attributes that are not typically associated

with those particular goods that would cause it to be classified in a different

class, that use or attribute should be indicated in the identification in order to

justify the classification.  For example, "footwear" usually refers to a

particular type of wearing apparel for the feet and, thus, is classified in Class

25 without further specification. However, "orthopedic footwear" is classified in

Class 10 as medical apparatus based on the particular use of the goods.

With broad identifications, as with any identification

that includes more than one item, the amount of proof (normally by way of specimens)

necessary to assure the examining attorney that the mark has been used on "all" the

items in the application will vary.

See

TMEP

§904.01(a)

. The USPTO does not require specimens showing use

of the mark for every item set forth in an application.  However, if an identification

is broad or so extensive that it encompasses a wide range of products or services, the

applicant may be required to submit evidence that it actually uses the mark on a wide

range of products or services to obtain registration.

37 C.F.R. §§2.56(a)

,

2.86(a)(3)

,

(b)(3)

, and

does not require specimens showing use

of the mark for every item set forth in an application.  However, if an identification

is broad or so extensive that it encompasses a wide range of products or services, the

applicant may be required to submit evidence that it actually uses the mark on a wide

range of products or services to obtain registration.

37 C.F.R. §§2.56(a)

,

2.86(a)(3)

,

(b)(3)

, and

(e)

.

See

In re Air Products & Chemicals, Inc.

, 192 USPQ 84,

recon. denied

192 USPQ 157 (TTAB 1976).  See

TMEP §1402.05

regarding accuracy of

the identification.

The examining attorney should consider the degree of

commercial relationship between the products.  For a closely related group, a specimen

showing use of the mark on one item of the group is sufficient.  As the closeness of the

relationship becomes less certain, specimens of use on more than one item might be

necessary to show generalized use.

37 C.F.R. §§2.56(a)

,

2.86(a)(3)

,

(b)(3)

, and

(e)

. The nature of

the mark may also be considered.  "House" marks are placed on all the goods that a

company produces, whereas a "product" mark that is appropriate only for a specific

commodity is used only on that commodity.  See

TMEP §1402.03(b)

regarding house

marks, and

TMEP

§1402.03(c)

regarding identifications that refer to "a full

line of" a genre of products.

The appropriateness of any broad identification depends

on the facts in the particular case.  The examining attorney should permit applicants to

adopt terms that are as broad as the circumstances justify.