Parentheses and Brackets Should Not be Used in Identifications of Goods and Services

Generally, parentheses and brackets must not be used in

identifications of goods and services.  The Post Registration Section of the USPTO uses

single square brackets to indicate that goods/services have been deleted from a

registration either by amendment under

15 U.S.C.

§1057

,  filing of a partial affidavit of continued use under

15

U.S.C. §1058

or

15 U.S.C.

§1141k

, or filing of a partial renewal application under

15

U.S.C. §1059

.   The Post Registration Section also uses double

parentheses to indicate that certain goods or services are not claimed in an affidavit

of incontestability under

15 U.S.C.

§1065

.  See

TMEP

Chapter 1600

regarding affidavits of continued use or

excusable nonuse, renewal applications, affidavits of incontestability, and amendment of

registrations. Therefore, to avoid confusion, applicants generally must not use

parentheses and brackets in the identification of goods or services in an

application.

The only time parentheses may be used in an

identification is when the parentheses merely explain the matter preceding the

parenthetical phrase in such a way that it does not affect the clarity or scope of the

identification. For example, although not required, it is acceptable to include an

acronym in parentheses after the wording for which the acronym stands because it would

not impact the clarity of the identification, e.g., "consulting services in the field of

software as a service (SAAS)" in Class 42 or "mountaineering and rock climbing

equipment, namely, spring-loaded camming devices (SLCDs)" in Class 28. In general,

synonyms or foreign translations of terms must not be included in parentheses in an

identification. However, the USPTO’s

Acceptable Identification of Goods and

Services Manual

(ID Manual) does include several TM5 entries with the

transliteration of primarily food items in parentheses

mountaineering and rock climbing

equipment, namely, spring-loaded camming devices (SLCDs)" in Class 28. In general,

synonyms or foreign translations of terms must not be included in parentheses in an

identification. However, the USPTO’s

Acceptable Identification of Goods and

Services Manual

(ID Manual) does include several TM5 entries with the

transliteration of primarily food items in parentheses. An identification of goods such

as "fried tofu pieces (abura-age)" in Class 29 is acceptable because the parenthetical

phrase merely provides further information about the goods in a manner that does not

create ambiguity or impact the scope of the identification.

If the wording contained within the parentheses limits

the nature, function, purpose, use, channels of trade, or intended users of the

goods/services, such wording likely will affect the clarity of the identification. For

example, "bags (tote)" in Class 18 would not be an acceptable use of parentheses.  If

the identification were misinterpreted to mean that "tote" was no longer part of the

identification of goods (due to an amendment of the goods or filing of a partial

affidavit of continued use or renewal application), the item would merely read "bags."

That would create an ambiguity within Class 18, since it could refer to any type of bag

– from all-purpose sports bags to evening bags – and would make a determination of

likelihood of confusion difficult.  Also, some bags are in classes other than Class 18.

Without an indication of the type of bag, classification of the goods is problematic.

In the preceding example, "bags" is indefinite and overly broad. However, definite

identifications must also not be followed by parenthetical information that affects the

clarity of the identification; for example, although "coats" is acceptable in Class 25,

"coats (cotton)" is unacceptable because the nature of the goods is limited by the

parenthetical wording

ication of the goods is problematic.

In the preceding example, "bags" is indefinite and overly broad. However, definite

identifications must also not be followed by parenthetical information that affects the

clarity of the identification; for example, although "coats" is acceptable in Class 25,

"coats (cotton)" is unacceptable because the nature of the goods is limited by the

parenthetical wording. The parenthetical information must be incorporated into the

identification rather than merely appearing within parentheses. "Coats made of cotton"

would be an acceptable amendment of "coats (cotton)."

If bracketed material is entered in an identification, it

will be automatically deleted in all electronically filed applications. However,

bracketed material will not be automatically deleted from the identification in

applications filed under §66(a) or in paper applications. In a paper application, the

examining attorney may delete the bracketed material with a "no-call" examiner’s

amendment.

See

TMEP

§707.02

.

See

TMEP §§1904.02(c)

and

1904.02(h)

regarding the circumstances in which parenthetical

information may be removed from the identification in an application filed under §66(a)

by “no-call” examiner’s amendment.