[E-trademarks] New TMEP Section

Tue Nov 7 13:00:41 EST 2023

This advisement was posted on another forum:

TMEP Section 1402.02
(Broadly recited goods/services are not entitled to a filing date)
02.02    Entitlement to Filing Date With Respect to Identification of Goods and Services

An application under §1 or §44 must include an identification of goods or services to receive a filing date.  37 C.F.R. §2.21(a)(4)<https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-b8a9afa6-6acb-43cf-8e90-f2c1efc1af29.html>.

Only goods and/or services listed in the proper field on a TEAS application will be considered for determining whether the application meets the requirements for receipt of a filing date. Any goods or services listed on the drawing page of a permitted paper application are considered part of the identification of goods and services.

If the application does not identify any recognizable goods or services, the USPTO will deny a filing date.  For example, a filing date will be denied if the identification of goods or services is blank or recites only the following:

  *   (1) the mark itself;
  *   (2) a class number;
  *   (3) wording such as "company name," "corporate name," or "company logo;"
  *   (4) "Internet services" or "e-commerce services;"
  *   (5) "business" or "business services;"
  *   (6) "miscellaneous" or "miscellaneous services;"
  *   (7) "personal services;"
  *   (8) "parts;"
  *   (9) "products;"
  *   (10) "equipment;"
  *   (11) "NFTs," "nonfungible tokens," or "non-fungible tokens;"
  *   (12) "charitable services;"
  *   (13) "information services;"
  *   (14) "educational information;" or
  *   (15) "consulting services."

These examples fail to meet the minimum requirements necessary to receive a filing date under 37 C.F.R. §2.21(a)(4)<https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-b8a9afa6-6acb-43cf-8e90-f2c1efc1af29.html>, because they do not provide adequate notice to third parties as to the nature of the goods or services.

In an application under §1 or §44, if an examining attorney finds that the application fails to specify any recognizable goods or services, the examining attorney should have the filing date cancelled for failure to specify recognizable goods or services, under 37 C.F.R. §2.21(a)(4)<https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-b8a9afa6-6acb-43cf-8e90-f2c1efc1af29.html>.

If the identification language includes wording that would not be sufficient and other wording that would itself be specific enough to entitle the application to a filing date, the USPTO will grant the application a filing date.  However, any wording that would not otherwise be sufficient for a filing date will not be considered part of the application, and will be disregarded for the purpose of determining the scope of permissible amendments.  For example, if the applicant uses "e-commerce services" along with definite language, such as "online retail store services featuring clothing," the identification of services may only be amended to identify services within the scope of the definite language, i.e., "online retail store services featuring clothing," and may not include services within the scope of "e-commerce services."  Or, if the applicant uses "advertising and business," the USPTO will disregard "business," and the identification may only be amended to services within the scope of the term "advertising."  See TMEP §§1402.07<https://tmep.uspto.gov/RDMS/TMEP/current?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=#/current/TMEP-1400d1e2475.html> et seq. regarding the scope of an identification for purposes of amendment.

The fact that goods or services are referenced on the specimen(s) does not satisfy the requirement for an "identification of goods or services." In a TEAS application, the identification of goods and/or services must appear in the proper field.  See TMEP §1402.01(d)<https://tmep.uspto.gov/RDMS/TMEP/current?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=#/current/TMEP-1400d1e2077.html> regarding the location of the identification of goods and/or services. In a permitted paper application, the written application and/or separate drawing page must indicate the goods and/or services.

The USPTO will not deny a filing date if the applicant uses the language of an international class heading or indicates that the mark is used on all goods or services in a certain class.  However, the USPTO strongly discourages the use of the language of the international class headings or statements that the mark is used on all goods or services in a class to identify the goods or services for which registration of the mark is sought, and will generally require amendment of any such identification. See In re Fiat Grp. Mktg. & Corporate Commc'ns S.p.A., 109 USPQ2d 1593, 1598 (TTAB 2014) (stating that "use of the words comprising a class heading as an identification in an application filed with the USPTO is not deemed to include all the goods or services in the established scope of that class"); TMEP §1402.07(a)<https://tmep.uspto.gov/RDMS/TMEP/current?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=#/current/TMEP-1400d1e2479.html>. See also TMEP §1402.01<https://tmep.uspto.gov/RDMS/TMEP/current?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=#/current/TMEP-1400d1e1986.html> regarding use of "included in this class" and similar wording.

Note also that an applicant is required to submit a verified statement that the applicant is either using the mark in commerce or has a bona fide intention to use the mark in commerce on or in connection with all the goods and/or services set forth in the identification. It is unlikely that any applicant is using or intends to use a mark on all goods or services within a certain class. If an applicant claims use or asserts a bona fide intention to use the mark on all goods/services in a particular class but only uses or intends to use the mark on some of those goods/services, the resulting registration could be void. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) ; Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986) .

Section 66(a) Applications. Because the requirements for receipt of a filing date set forth in 37 C.F.R. §2.21<https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-b8a9afa6-6acb-43cf-8e90-f2c1efc1af29.html>  are specifically limited to applications under §1 and §44 of the Trademark Act, 15 U.S.C. §§1051<https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-78769f64-81f6-41f2-85f6-bfeb0d674399.html>,  1126<https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-dcb5b705-31d5-4c41-be3d-dc16b4f897c0.html>, the USPTO does not apply these requirements to applications under §66(a) for "filing date" purposes. In an application under §66(a), the date of the international registration, or the effective date of a subsequent designation in which the holder of an international registration seeks extension of protection in the United States, is treated as the effective filing date.

Kind regards,

Diane L. Gardner
Reg. No. 36,518
_____________________________________________________________
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