As stated in section 1402.01 Specifying the Goods and/or Services - in General of the Trademark Manual of Examination Procedure:

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) and 1051(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 products 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, 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. See 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); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953).

The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods and/or services covered by the mark. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).

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 id. ("chronographs" held indefinite because it includes both time recording devices in Class 9 and watches in Class 14 and because 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 (Class 11), horse blankets (Class 18), and bed blankets (Class 24).

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.).

The accuracy of identification language in the original application is important because the identification cannot later be expanded. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07 et seq.; In re M.V Et Associes, 21 USPQ2d 1628 (Comm'r Pats. 1991).

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  • Requirements for an acceptable identification of goods and services.
    • In re Thor Tech, Inc., Serial No. 78487208, (TTAB 2007).
      • An identification of goods or services will be considered acceptable if it: (1) describes the goods and/or services so that an English speaker could understand what the goods and/or services are, even if the grammar or phrasing is not optimal; (2) meets the standards (not necessarily the language) set forth in the Acceptable Identification of Goods and Services Manual; (3) is not a class heading; and (4) is in the correct class. TMEP §1402.01(a). Finally, the USPTO gives deference to the language set forth by the applicant. Id.
  • An identification of goods and services should use generally understood terminology and avoid using terminology that includes items in multiple classes (considered indefinite).
    • In re Thor Tech, Inc., Serial No. 78487208, (TTAB 2007).
      • As detailed in the Trademark Manual of Examining Procedure (TMEP), an identification of goods "should set forth common names, using terminology that is generally understood .... Terminology that includes items in more than one class is considered indefinite." TMEP §1402.01 (5th ed. 2007).
  • There is nothing fraudulent in providing an identification of goods that includes both a broad product term and a specific product term provided the applicant is using its mark on the specific product, and the specific product is encompassed within the broad product term.
    • Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., Cancellation No. 92043953, (TTAB 2007).
      • As long as the general product terminology encompasses the specific product terminology in an identification of goods, and there is use on the specific product, there can be no fraud; that is, there is nothing fraudulent in providing an identification of goods that includes both a broad product term and a specific product term so long as the applicant/registrant is using its mark on the specific product, and the specific product is encompassed within the broad product term (assuming that the broad product term is sufficiently definite for purposes of registration). In the present case, inasmuch as respondent could have legitimately obtained a registration covering the identification of goods reading "wines" (even though it was using the mark on only "sparkling wines"), respondent has not obtained any rights to which it was not entitled.
    • Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., Cancellation No. 92043953, (TTAB 2007).
      • The converse situation, however, is not true; that is, if respondent were only using its mark on "wines" other than "sparkling wines," then, of course, "sparkling wines" must not appear in the identification of goods. The present case involves the reverse fact situation than that which the Federal Circuit faced in Torres v. Cantine Torresella S.r.l., 1 USPQ2d at 1485.
  • Redundant or inartfully worded identifications of goods are not necessarily fraudulent depending on applicant's actual use.
    • Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., Cancellation No. 92043953, (TTAB 2007).
      • This is not a case in which the trademark was used on less than all of the goods. Cf. J.E.M. International, Inc. v. Happy Rompers Creation Corp., 74 USPQ2d 1526 (TTAB 2005); and Medinol v. Neuro Vasx, Inc., 67 USPQ2d at 1209. While respondent's identification of goods "wines and sparkling wines" may be redundant or inartfully worded in view of respondent's actual use, this identification is not fraudulent. In saying this, we are mindful, of course, of the dictionary definition of the word "and" that appears in respondent's identification of goods. The word "and" is defined, in relevant part, as "together with or along with; also; in addition; as well as; added to; plus." The American Heritage Dictionary of the English Language (1978).
  • A moniker given to an idea, a concept, a process or an invention does not magically become a source identifier.
    • In re Gary R. Johnson, Serial No. 75/464,801, (TTAB 2002).
      • No matter how much applicant wishes it were so, a moniker given to an idea, a concept, a process or an invention does not magically become a source identifier. See In re Port-A-Hut, Inc., 183 USPQ 680, 682 (TTAB 1974).
  • Statements regarding the use of the mark on the identified goods and/or services are certainly material to issuance of a registration.
    • Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., Cancellation No. 92043953, (TTAB 2007).
      • Statements regarding the use of the mark on the identified goods and/or services are certainly material to issuance of a registration. Id. See also: Hachette Fillipacchi Presse v. Elle Belle, LLC, ___USPQ2d___ (TTAB, Can. No. 92042991, April 9, 2007); Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007); Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006); Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003); and First International Services Corp. v. Chuckles, 5 USPQ2d 1628 (TTAB 1988).
  • An applicant cannot broaden its original identification of goods to include a recital of services.
    • In re Gary R. Johnson, Serial No. 75/464,801, (TTAB 2002).
      • As noted earlier, the Trademark Examining Attorney correctly refused to permit applicant to broaden its original identification of goods to include a recital of services. However, to the extent that applicant may take the printed or electronic texts of others and change them consistent with its invention, such a "text reformatting service" (whether done manually or electronically) may be analogized to "language translation services" in International Class 42. While provided only as possible examples, if any such wording comports with applicant's intentions for applying his mark to such products or services, such an identification of goods or recitation of services could be deemed acceptable. However, we cannot determine whether applicant has adopted a valid trademark or service mark as this record fails to capture the essence of the goods and/or services on which the GLIDETEXT mark will be used.
  • The Board has held that collateral products which serve the purpose of promoting a party's primary goods and which have more than a mere incidental function in relation to the primary goods may constitute goods in trade.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007).
      • The Board has held that collateral products which serve the purpose of promoting a party's primary goods and which have more than a mere incidental function in relation to the primary goods may constitute goods in trade. In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) [ball point pens which are used to promote applicant's tools, but which possess utilitarian function and purpose, and have been sold to applicant's franchised dealers and transported in commerce under mark, constitute goods in trade]; and In re United Merchants & Manufacturers, Inc., 154 USPQ 625 (TTAB 1967) [calendar which is used as advertising device to promote applicant's plastic film, but which possesses, in and of itself, a utilitarian function and purpose, and has been regularly distributed in commerce for several years, constitutes goods in trade].
  • The Board assumes that the common goods of opposer and applicant are marketed to overlapping classes of consumers if some of the goods are identical and there are no restrictions in applicant's identification.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007).
      • Similarly, because some of the goods are identical and because there are no restrictions in applicant's identification, we must assume that the common goods of opposer and applicant are marketed to overlapping classes of consumers. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed. Cir. 1990) ("an application with an identification of goods having no restriction on trade channels obviously is not narrowed by testimony that the applicant's use is, in fact, restricted to a particular class of purchasers").
  • Further, in view of the identity of the goods and trade channels, the goods must be presumed to be sold to the same class of purchasers.
    • Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007).
      • Further, in view of the identity of the goods and trade channels, the goods must be presumed to be sold to the same class of purchasers. In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
  • Case Finding: A mark was not registerable where the identified specimens were only to promote the goods/services and do not constitute the goods/services themselves.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007).
      • On the other hand, in Ex parte Bank of America National Trust and Savings Association, 118 USPQ 165 (Comm'r Pats. 1958), it was held that a mark was not registrable for bank passbooks, checks and other printed forms, where such materials were used only as necessary tools in the performance of banking services, and the applicant was not engaged in printing or selling forms as commodities in trade. Further, in In re Douglas Aircraft Co., Inc., 123 USPQ 272 (TTAB 1959), the Board held that pamphlets, booklets, brochures, bulletins, and letterheads which serve only to advertise, explain and publicize the goods in which an applicant deals do not constitute goods of such applicant. In Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994), the Board found that an applicant's purported game that was not clearly labeled as a game and consisted merely of three photocopied pages, stapled together without any packaging, served only to promote applicant's band and other products, and was not a bona fide game but rather an advertising flier for applicant's band. The Board also noted that there was no real substance or entertainment value to the purported game, that the flier/game had been distributed primarily as a give-away, and the record showed only one advertisement which made reference to a game.
  • Case Finding: The Board disagreed with the argument that boxes containing goods have additional utility (such as storage of the goods) and thus do not constitute goods in trade.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007).
      • We note that there is no evidence that applicant is a manufacturer of boxes or that applicant is engaged in selling boxes as commodities in trade. With respect to the puzzle boxes, in particular, we are not persuaded by applicant's argument that because the puzzle boxes may be used to store the puzzle pieces when not being used, such boxes have additional utility and thus constitute goods in trade. It is obvious that because of the loose nature of puzzle pieces, they must be held within some type of point of sale container. It only makes sense that consumers would store the puzzles pieces in the original container when the puzzles pieces are not being used. Any number of products may be stored by consumers in their original boxes or packaging when not being used (e.g., shoes may be stored in their original cardboard boxes, coffee beans may be stored in their original bags, and DVDs may be stored in their original plastic boxes). However, the mere fact that original boxes or packaging may be used to store products does not infuse such boxes or packaging with additional utility such that they constitute goods in trade. Because many products are stored in the containers in which they are sold, consumers are likely to regard the puzzle boxes as nothing more than point of sale containers, as opposed to separate goods in trade.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007).
      • It is common knowledge that packaging materials may be used as toys by children and thus many such materials, such as plastic bags, have warnings that they are not toys to be used by children. In short, we are not convinced on this record that consumers recognize the toy laptop computer boxes as carrying cases and part of the ongoing play environment. Rather, we believe consumers would view such boxes as nothing more than point of sale containers for applicant's toy laptop computers. In view of the foregoing, we are not persuaded that the toy laptop computer boxes have additional utility such that they constitute goods in trade.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007).
      • In sum, the goods in this case, trapezoidal boxes for toys, games and playthings, are unlike the ball point pens and calendars in Snap-On Tools and United Merchants & Manufacturers, Inc., respectively. We agree with the examining attorney that such goods are incidental to applicant's primary goods, namely, toys, games and playthings, and are not goods in trade of applicant. Accordingly, the refusal on the ground that the identified goods do not constitute goods in trade is affirmed.
  • Case Finding: There are cases which found that underwear and other clothing items are related items.
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007).
      • In regard to applicant's other goods, we note that there are reported cases that found underwear and other clothing items to be related items. See, e.g., Jockey International Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (opposer provided evidence that a number of different companies market under the same trademarks both underwear and neckties and opposer's underwear and applicant's neckties were found by both majority and concurring opinions to be related goods for likelihood of confusion purposes).
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007).
      • There is no per se rule, however, that such goods must be considered related. See In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984).
    • The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007).
      • Nor will the Board take judicial notice that items of outerwear and undergarments are related items for likelihood of confusion purposes. See In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987).
  • Case Finding: A term that merely designates a process, or is used only as the name of a process, is not registrable as a mark.
    • In re Gary R. Johnson, Serial No. 75/464,801, (TTAB 2002).
      • Applicant's tardy attempt at pursuing a registration for a mark used in connection with alleged services ("licensing of computer software" or "licensing of the Glidetext concept") is reminiscent of reported decisions of this Board and our principal reviewing Court, dealing with the designation for a process or method where an earlier applicant also thought the name of its process or invention functioned as a service mark. A concept, or a process, however, is only a way of doing something, and by itself is not an activity for the benefit of others. A term that merely designates a process, or is used only as the name of a process, is not registrable as a service mark. See In re Universal Oil Products Co., 167 USPQ 245 (TTAB 1970), aff'd, 177 USPQ 456 (CCPA 1973) [alleged marks used only in the context of a process and not in association with provision of the services]; In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (CCPA 1975) [Alleged mark identifies a water treatment process but is not used as a mark]; In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984) [proposed mark used only in connection with a photochemical method, and there was no association between the applicant's offer of services and the proposed mark]; In re J.F. Pritchard & Co., 201 USPQ 951 (TTAB 1979) [proposed mark used only to identify liquefaction process, and not used in association with design and construction services].
  • A multiple-class application can be viewed as a series of applications for registration of a mark in connection with goods or services in each class, combined into one application.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • Thus, a multiple-class application can be viewed as a series of applications for registration of a mark in connection with goods or services in each class, combined into one application.
  • An applicant for a trademark registration may file for registration in more than one class by filing a single application.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • An applicant for a trademark registration may file for registration in more than one class by filing a single application. See Trademark Rule 2.86.
  • An application with multiple classes requires, for each class, payment of the application filing fee and submission of dates of use and a specimen of use for each class before the application will proceed to registration.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • Such an application requires, for each class, payment of the application filing fee and submission of dates of use and a specimen of use for each class before the application will proceed to registration. Id.
  • The filer of an application with multiple classes is in the same position it would be had it filed several single-class applications instead.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • As a general matter, the filer of such an application is in the same position it would be had it filed several single-class applications instead. See, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1101-02, 192 USPQ 24, 28 (CCPA 1976) (noting combined application is regarded as though it were group of individual applications); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224, 1226 (TTAB 1987)(noting multiple-class application for goods and services is essentially two separate applications combined for convenience of applicant and USPTO); Electro-Coatings, Inc. v. Precision National Corp., 204 USPQ 410, 420 (TTAB 1979)("there are, in law, three applications and three oppositions to be adjudicated, because each class in a multiple class application constitutes a separate case.").
  • "computer game software" is specific, definite, and would be clear to the average person and meets the requirements for identifications of goods.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Further, applicant argues in its response and in its appeal briefs that the identification "computer game software" is specific, definite, would be clear to the average person and otherwise meets the Office's requirements for identifications of goods. We agree that it meets those requirements. See In re Paper Doll Promotions, Inc., 84 USPQ2d 1660 (TTAB 2007).
  • The Office's requirement that the examining attorney ensure the accuracy of the identification of goods is abundantly clear.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • The Office's requirement that the examining attorney ensure the accuracy of the identification of goods is abundantly clear. See TMEP Section 1402.01 ("The identification of goods or services must be specific, definite, clear, accurate, and concise"; "The accuracy of the identification language in the original application is important because the identification cannot later be expanded"), and Section 1402.01(e) ("the examining attorney may require amendment of the identification of goods or services to ensure that it is clear and accurate") (emphasis added).
  • Although it may be more precise to identify game feature software by the identification suggested by the examining attorney, "a feature of computer game software that allows users to ______ (specify function)," it would not be inaccurate to identify such software simply as computer game software.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Although it may be more precise to identify game feature software by the identification suggested by the examining attorney, "a feature of computer game software that allows users to ______ (specify function)," it would not be inaccurate to identify such software simply as computer game software. The examining attorney has not established that Office identification policies require either that "computer game software" only be used for software that comprises an entire game, or that the suggested, more specific language is required when computer game software comprises less than an entire game.
  • Certainly the entire collection of code used for a particular game can aptly be referred to as computer game software; but the subsets of such code that would support only particular aspects or features of a game can also be accurately identified by such an identification.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Certainly the entire collection of code used for a particular game can aptly be referred to as "computer game software"; but we conclude that subsets of such code that would support only particular aspects or features of a game can also be accurately identified by such an identification. See In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS refused as descriptive of "computer software for use in the development and deployment of application programs on a global computer network" in part based on evidence that "beans" are building blocks used to create larger pieces of software).
  • The Office's requirement that the examining attorney ensure the accuracy of the identification of goods is abundantly clear.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • The Office's requirement that the examining attorney ensure the accuracy of the identification of goods is abundantly clear. See TMEP Section 1402.01 ("The identification of goods or services must be specific, definite, clear, accurate, and concise"; "The accuracy of the identification language in the original application is important because the identification cannot later be expanded"), and Section 1402.01(e) ("the examining attorney may require amendment of the identification of goods or services to ensure that it is clear and accurate") (emphasis added). The responsibility that the examining attorney ensure accuracy of the identification exists notwithstanding that TMEP Section 1402.03(d) ("Identifying Computer Programs with Specificity") notes that "computer game software" is an acceptable identification, for TMEP Section 1402.04 explains that "even if the identification is definite, examining attorneys may inquire as to whether the identification chosen accurately describes the applicant's goods or services." Finally, see TMEP Section 1402.05, "Accuracy of Identification" and decisions discussed therein.
  • Case Finding: It is appropriate to construe the identification of goods in the application as necessarily limited to beer sold in restaurants, bars, pubs, and the like. We do so because applicant identified the alleged mark as configuration of product packaging, and the beer glass depicted in the alleged mark is clearly an open, rather than closed, container.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • Furthermore, we deem it appropriate to construe the identification of goods in the application as necessarily limited to beer sold in restaurants, bars, pubs, and the like. We do so because applicant identified the alleged mark as "configuration of product packaging" (underlining added), and the beer glass depicted in the alleged mark is clearly an open, rather than closed, container. Thus, applicant's beer would be dispensed in the beer glass and stand having wording and scrollwork in restaurants, bars, pubs, and the like.9 FOOTNOTE 9 "We note that applicant states at p. 2 of its Appeal Brief that the beer glass and stand with wording and scrollwork is also "employed to dispense applicant's beer . at home." In addition, applicant submitted a photograph of a gift set it sells comprising its beer (apparently bottled) and the beer glass and stand with wording and scrollwork. Presumably, these gift sets may be purchased by consumers. However, applicant's identification of goods is simply beer; not bottled beer or sets comprising bottled beer and the beer glass and stand with wording and scrollwork. Thus, for the reasons indicated, it is necessary to read the application's identification as limited to beer sold in restaurants, bars, pubs, and the like where beer in open containers is sold."
G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009) In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009) Fort James Operating Company v. Royal Paper Converting, Inc., Opposition No. 91122964, (TTAB 2007) In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007) The B.V.D. Licensing Corporation v. Florencio Rodriguez, Opposition No. 91157529, (TTAB 2007) Tri-Star Marketing, LLC v. Nino Franco Spumanti S.R.L., Cancellation No. 92043953, (TTAB 2007) In re Gary R. Johnson, Serial No. 75/464,801, (TTAB 2002) Grand Total
Hurley International LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007) 1
Hachette Filipacchi Presse v. Elle Belle LLC, 85 USPQ2d 1090 (TTAB 2007) 1
In re Paper Doll Promotions Inc., 84 USPQ2d 1660 (TTAB 2007) 1
Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) 1
J.E.M. International Inc. v. Happy Rompers Creation Corp., 74 USPQ2d 1526 (TTAB 2005) 1
Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003) 1
In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) 1
In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994) 1
Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994) 1
Jockey International Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) 1
Octocom Services Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) 1
First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988) 1
In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) 1
In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987) 1
Torres v. Cantine Torresella S.r.l, 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986) 1
In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) 1
In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984) 1
In re J.F. Pritchard & Co., 201 USPQ 951 (TTAB 1979) 1
Electro-Coatings, Inc. v. Precision National Corp., 204 USPQ 410 (TTAB 1979) 1
Federated Foods Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) 1
In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (CCPA 1975) 1
In re Port-A-Hut Inc., 183 USPQ 680 (TTAB 1974) 1
In re Universal Oil Products Co., 167 USPQ 245 (TTAB 1970), aff'd, 177 USPQ 456 (CCPA 1973) 1
In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) 1
In re United Merchants & Manufacturers Inc., 154 USPQ 625 (TTAB 1967) 1
In re Douglas Aircraft Co. Inc., 123 USPQ 272 (TTAB 1959) 1
Ex parte Bank of America National Trust and Savings Association, 118 USPQ 165 (Comm'r Pats. 1958) 1
Grand Total 3 2 1 5 4 7 5 27

Sec. 1051. Application for registration; verification

  1. (a) Application for use of trademark
    1. (1) The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the date of the applicant's first use of the mark, the date of the applicant's first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify that--
      1. (A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be the owner of the mark sought to be registered;
      2. (B) to the best of the verifier's knowledge and belief, the facts recited in the application are accurate;
      3. (C) the mark is in use in commerce; and
      4. (D) to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use, the applicant shall--
        1. (i) state exceptions to the claim of exclusive use; and
        2. (ii) shall \\1\\ specify, to the extent of the verifier's knowledge--
          ---------------------------------------------------------------------------
          \\1\\ So in original. The word ``shall'' probably should not appear.
          ---------------------------------------------------------------------------
          1. (I) any concurrent use by others;
          2. (II) the goods on or in connection with which and the areas in which each concurrent use exists;
          3. (III) the periods of each use; and
          4. (IV) the goods and area for which the applicant desires registration.
  2. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  3. (b) Application for bona fide intention to use trademark
    1. (1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.
    2. (2) The application shall include specification of the applicant's domicile and citizenship, the goods in connection with which the applicant has a bona fide intention to use the mark, and a drawing of the mark.
    3. (3) The statement shall be verified by the applicant and specify--
      1. (A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be entitled to use the mark in commerce;
      2. (B) the applicant's bona fide intention to use the mark in commerce;
      3. (C) that, to the best of the verifier's knowledge and belief, the facts recited in the application are accurate; and
      4. (D) that, to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.
    Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the requirements of subsections (c) and (d) of this section.
    1. (4) The applicant shall comply with such rules or regulations as may be prescribed by the Director. The Director shall promulgate rules prescribing the requirements for the application and for obtaining a filing date herein.
  4. (c) Amendment of application under subsection (b) to conform to requirements of subsection (a) At any time during examination of an application filed under subsection (b) of this section, an applicant who has made use of the mark in commerce may claim the benefits of such use for purposes of this chapter, by amending his or her application to bring it into conformity with the requirements of subsection (a) of this section.
  5. (d) Verified statement that trademark is used in commerce
    1. (1) Within six months after the date on which the notice of allowance with respect to a mark is issued under section 1063(b)(2) of this title to an applicant under subsection (b) of this section, the applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified statement that the mark is in use in commerce and specifying the date of the applicant's first use of the mark in commerce and those goods or services specified in the notice of allowance on or in connection with which the mark is used in commerce. Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent and Trademark Office. Such examination may include an examination of the factors set forth in subsections (a) through (e) of section 1052 of this title. The notice of registration shall specify the goods or services for which the mark is registered.
    2. (2) The Director shall extend, for one additional 6-month period, the time for filing the statement of use under paragraph (1), upon written request of the applicant before the expiration of the 6-month period provided in paragraph (1). In addition to an extension under the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph. Any request for an extension under this paragraph shall be accompanied by a verified statement that the applicant has a continued bona fide intention to use the mark in commerce and specifying those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee. The Director shall issue regulations setting forth guidelines for determining what constitutes good cause for purposes of this paragraph.
    3. (3) The Director shall notify any applicant who files a statement of use of the acceptance or refusal thereof and, if the statement of use is refused, the reasons for the refusal. An applicant may amend the statement of use.
    4. (4) The failure to timely file a verified statement of use under paragraph (1) or an extension request under paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period specified in paragraphs (1) and (2) for filing a statement of use.
  6. (e) Designation of resident for service of process and notices
    If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

 

 

C.F.R. Sec. 2.32. Requirements for a complete application.

  1. (a) The application must be in English and include the following:
    1. (1) A request for registration;
    2. (2) The name of the applicant(s);
    3. (3)
      1. (i) The citizenship of the applicant(s); or
      2. (ii) If the applicant is a corporation, association, partnership or other juristic person, the jurisdiction (usually state or nation) under the laws of which the applicant is organized; and
      3. (iii) If the applicant is a domestic partnership, the names and citizenship of the general partners;
      4. (iv) If the applicant is a domestic joint venture, the names and citizenship of the active members of the joint venture;
    4. (4) The address of the applicant;
    5. (5) One or more bases, as required by §2.34(a);
    6. (6) A list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark. In a United States application filed under section 44 of the Act, the scope of the goods and/or services covered by the section 44 basis may not exceed the scope of the goods and/or services in the foreign application or registration;
    7. (7) The international class of goods or services, if known. See §6.1 of this chapter for a list of the international classes of goods and services.
    8. (8) If the mark is not in standard characters, a description of the mark;
    9. (9) If the mark includes non-English wording, an English translation of that wording; and
    10. (10) If the mark includes non-Latin characters, a transliteration of those characters, and either a translation of the transliterated term in English, or a statement that the transliterated term has no meaning in English.
  2. (b) The application must include a verified statement that meets the requirements of §2.33.
  3. (c) The application must include a drawing that meets the requirements of §§2.51 and 2.52.
  4. (d) The application must include fee required by §2.6 for each class of goods or services.
  5. (e) For the requirements for a multiple class application, see §2.86.

 

 

C.F.R. Sec. 2.71. Amendments to correct informalities.

  1. The applicant may amend the application during the course of examination, when required by the Office or for other reasons.
    1. (a) The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.
    2. (b)
      1. (1) If the declaration or verification of an application under §2.33 is unsigned or signed by the wrong party, the applicant may submit a substitute verification or declaration under §2.20.
      2. (2) If the declaration or verification of a statement of use under §2.88, or a request for extension of time to file a statement of use under §2.89, is unsigned or signed by the wrong party, the applicant must submit a substitute verification before the expiration of the statutory deadline for filing the statement of use.
    3. (c) The applicant may amend the dates of use, provided that the applicant supports the amendment with an affidavit or declaration under §2.20, except that the following amendments are not permitted:
      1. (1) In an application under section 1(a) of the Act, the applicant may not amend the application to specify a date of use that is subsequent to the filing date of the application;
      2. (2) In an application under section 1(b) of the Act, after filing a statement of use under §2.88, the applicant may not amend the statement of use to specify a date of use that is subsequent to the expiration of the deadline for filing the statement of use.
    4. (d) The applicant may amend the application to correct the name of the applicant, if there is a mistake in the manner in which the name of the applicant is set out in the application. The amendment must be supported by an affidavit or declaration under §2.20, signed by the applicant. However, the application cannot be amended to set forth a different entity as the applicant. An application filed in the name of an entity that did not own the mark as of the filing date of the application is void.