Identification of Goods/Services

An international application must include a list of

goods/services that is identical to or narrower than the goods/services in the basic

application and/or registration.

37 C.F.R.

§7.11(a)(7)

.  If the applicant lists any goods/services that

are broader in scope than the goods/services in the basic application or

registration, the USPTO will not certify the international application.

The prepopulated form in the trademark electronic

filing system will include the listing of goods/services in the USPTO’s electronic

records for the basic application or registration as of the time the form is

generated.  An applicant may edit the list of goods/services by either deleting

particular goods/services or revising the wording in the identification.  In the

free-text form in the trademark electronic filing system (and the MM2 paper form, if

paper is permitted (

see

TMEP §1902.02(a)

)), the applicant must enter the

goods/services manually and may omit goods or services, or revise the wording in the

identification.

In general, semicolons should be used to separate

distinct categories of goods/services within a class.

See

TMEP

§1402.01(a)

. For example, “cleaners, namely, glass

cleaners, oven cleaners, and carpet cleaners; deodorants for pets” is an acceptable

identification in Class 3. In this example, the word “cleaners” names the category

covering “glass cleaners, oven cleaners, and carpet cleaners.” The semicolon prior to

“deodorants for pets” indicates that the deodorants are a separate category of goods

from the cleaners.

Similarly, commas generally should be used to separate

items within a particular category of goods/services. For example, “clothing, namely,

hats, sweaters, and jeans” is an acceptable identification of goods in Class 25 and

shows proper use of commas.

Colons and periods cannot be used as punctuation

within the identification of goods and services. Periods or “full stops” are allowed

at the end of the identification in an international application

ate

items within a particular category of goods/services. For example, “clothing, namely,

hats, sweaters, and jeans” is an acceptable identification of goods in Class 25 and

shows proper use of commas.

Colons and periods cannot be used as punctuation

within the identification of goods and services. Periods or “full stops” are allowed

at the end of the identification in an international application.

If the list of goods/services in an international

application is not identical to the list of goods/services in the basic application

and/or registration at the time the international application is reviewed, the MPU

trademark specialist must determine whether the applicant has identified any

goods/services that are broader than the goods/services covered in the basic

application and/or registration.

When the MPU trademark specialist reviews an

international application based on a basic application and/or registration that has

been amended during the course of its examination, the list of goods/services in the

international application must be within the scope of the goods/services in the basic

application and/or registration as amended, and not as set forth in the original

basic application and/or registration.

The IB provides a database of properly classified

terms, the Madrid Goods and Services Manager (MGSM), on WIPO’s website at

https://www.wipo.int/madrid/en/

. Applicants may refer to the MGSM

to review the classification assigned by the IB to more than 40,000 goods and

services as well as the translation of such goods/services into several

languages.