Receiving an Amended Identification of Goods and/or Services Requirement is extremely common.

The basic idea here is that the USPTO needs to clearly understand what you are selling or providing.  If they don’t fully understand what you are selling, they will ask for an amended identification of goods or services.

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Here are five tips in responding to this requirement:

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First, the Office Action likely has recommendations on specific wording that is pre-approved by the trademark examining attorney.  

For instance, let’s say I included “Clothing” in my initial application in Class 25.  You can see why “Clothing” might be a little confusing to the USPTO.  After all, it could refer to SO many articles of clothing, ranging from hats to bathing suits.

So, the USPTO would respond with an Amended Identification of Goods Requirement, which might specify the following pre-approved language:

Class 25: Clothing, namely,{t-shirts, jeans}.

Here, the USPTO has provided you with two examples of pre-approved language in the brackets.  

So, you know that if you responded with “Clothing, namely, t-shirts and jeans”, or just one of the specific goods, like “Clothing, namely t-shirts” it would be acceptable by the USPTO.  

Also, you would not include the actual brackets in your response!

To conclude the first tip, if the USPTO provides you with recommended language, and you find that language to be acceptable and accurate, you can simply use that pre-approved language in your response.

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Second, there is a Trademark Identification Manual or ID Manual that might assist you with coming up with an acceptable identification of goods or services.

Let’s say that the USPTO does not provide you with recommended language to amend your goods or services, or you do not agree with the recommended language provided in your Office Action.

In that case, you can turn to the ID Manual for some guidance on coming up with specific language that describes your goods and services.

The link to the ID Manual should be included in your Office Action at the end of the section on the Amended Identification of Goods and/or Services.

Now, let’s try searching “Clothing”.  As you can see, there are a lot of results.  One column describes the goods, which is the pre-approved language by the USPTO, and to the left of that is the Class column.  Here, I’d like my goods to stay only within Class 25, so I want to make sure the recommended language is in Class 25.

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So, for instance, you’ll see that “doll clothing” would not work, because that is in Class 28.  If you keep scrolling down, you will see specific examples of goods in Class 25, such as “gloves as clothing”, “jackets”, and “belts”.  If those goods accurately describe what I’m selling, I could use all of these examples in my response!

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Or, you could search for more specific articles of clothing.  Let’s say I’m selling bathing suits.  If I search bathing suits, I would see that this is a pre-approved description for Class 25!

Now, keep in mind that these are just examples of acceptable language.

The ID Manual is only meant to guide you with some specific examples of pre-approved language.

It is NOT a comprehensive list!

There are many ways to write acceptable identifications of goods and services that are not a part of the ID manual.   Your goods and services might be unique and not fall within this ID manual, and that’s okay.

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Third, you can call the trademark examining attorney for clarification on an amended identification of goods or services requirement.

Suppose you receive an Amended Identification of Goods and Services Requirement.

You’ve completed the first two steps.  First, you’ve considered the trademark examining attorney’s recommended language, but it doesn’t seem to totally fit what you’re selling or providing.
Second, you’ve done some searching on the ID manual, but it hasn’t been helpful.

At this point, you can call the trademark examining attorney and ask for clarification on this requirement.

Remember that the trademark examining attorney cannot fully understand every good and service provided in the United States!  If you have a good or service that is unique, for instance, you might need to speak with the trademark examining attorney to fully explain to them what you’re selling.  

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The trademark examining attorney’s phone number is listed at the bottom of the Office Action in the signature block.  Be sure to have your serial number, which is the 8-digit number that begins with 9, ready before you call.

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Fourth, you cannot “broaden the scope” of your goods and services.

What does “broaden the scope” mean? It means that in your Response, you can’t expand what you’re selling from what you previously specified in the application.

Let’s use an example.  Suppose in my application, I listed the following goods in Class 25:  Swimsuits, hats, footwear.

I’ve clearly identified three specific articles of clothing. I can’t then add “umbrellas” in my Response, because that would broaden what I specified in my initial application.

Or, let’s say my initial application stated that I’m selling “polka-dotted brown shoes for women” in Class 25.  I can’t then respond with “footwear” in my Response to the Amended Identification of Goods Requirement.  

After all, I provided a very specific example of “polka-dotted brown shoes for women” in my initial application, and “footwear” could mean many different things, such as men’s shoes to slippers. Responding with “footwear” therefore would be broader than the good I listed in my initial application.

So, to recap, make sure your Response to an Amended Identification of Goods does not “broaden the scope” of your goods and services.

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Fifth, remember that you should only include goods and services that you are actually selling, or plan to sell or provide.

Remember that if you are applying under a 1(a) basis, you are saying that your goods and services are already in commerce.  So, you only want to list the goods and services you are actually selling with your trademark!

If you’re applying under a 1(b) basis, you are saying that you have a genuine intent to sell the goods and services with your trademark.  If you do not have a genuine intent to sell certain goods and services, you should not include them in your Application.  Your statements to the USPTO must be honest.