Filing a trademark application often involves selecting the correct identification for the goods or services associated with the mark. While the USPTO Identification (ID) Manual provides pre-approved entries, many of these include fill-in-the-blank elements that require applicants to customize the description. These partially custom identifications offer cost savings over fully custom entries, but they also present risks. Recently, some trademark examining attorneys have scrutinized these entries, claiming applicants exceed the permissible scope and imposing additional fees unnecessarily.
This article explores how to use partially custom identifications effectively while avoiding improper fee assessments and rejections.
Fill-in-the-Blank Identifications
Partially custom identifications allow applicants to tailor goods and services descriptions while still leveraging the USPTO ID Manual. Examples of these entries include:
- “Processed meat, namely, [specific type of meat]”
- “Bicycle parts, namely, [specific part]”
- “Sound recordings featuring [specific content]”
These entries save costs by avoiding the additional fees associated with fully custom identifications—currently $100, increasing to $200 on January 20, 2025. However, improperly completing these fields can lead to allegations of exceeding scope, which examining attorneys may cite as grounds for additional fees or refusals.
Recent Trends in Examination Practices
Trademark examining attorneys have increased scrutiny on partially custom identifications, sometimes claiming that applicants have exceeded the permissible scope of the fill-in-the-blank element. In some cases, these allegations may be justified, such as when:
- Unrelated Items Are Added: For example, describing goods as “processed meat, namely, laptop computers” is clearly outside the intended scope.
- Broad or Vague Terms Are Used: Entries like “bicycle parts, namely, bicycle parts” fail to provide sufficient detail.
However, there are growing concerns that examining attorneys may improperly interpret reasonable entries as overreaching, leading to unnecessary fees or rejections. This practice appears to exploit the increased costs for corrections to applications filed under the TEAS Plus system, where additional fees are triggered if an identification is deemed incorrect.
Addressing Improper Fee Allegations
The Trademark Manual of Examining Procedure (TMEP) provides clear guidelines for how fill-in-the-blank elements should be handled. Section 819.01(g) specifies that amendments to identifications are permissible without additional fees, provided the revised description remains within the original scope. For example:
- Amending “footwear” (Class 25) to “orthopedic footwear” (Class 10) is acceptable.
- Amending “headwear” (Class 25) to “protective helmets for sports” (Class 9) is also acceptable.
The TMEP also highlights extreme examples of misuse, such as inserting goods unrelated to the original description, but these do not represent most cases. Applicants should challenge allegations of improper scope when their identification aligns with the TMEP’s standards.
Consequences of Violations
When an examining attorney determines that a fill-in-the-blank entry exceeds its scope:
- The application may no longer qualify as a TEAS Plus filing, incurring additional fees.
- The applicant may need to amend the identification, delaying the registration process.
The TMEP acknowledges that examining attorneys may reject entries that appear to exceed the intended scope. However, applicants should challenge rejections that deviate from the manual’s guidelines, especially if their identification aligns with TMEP standards.
Partially custom trademark identifications are a cost-effective way to tailor goods and services descriptions, but they come with risks. Recent examination practices suggest that some trademark examining attorneys may improperly allege scope violations to justify additional fees. By understanding the rules outlined in the TMEP, using precise language, and challenging improper claims, applicants can avoid unnecessary costs and ensure their applications proceed smoothly.
