TMO: New Practice on Amendment of Specification of Goods/Services

The Trademark Office (TMO) has adopted a new practice on the amendment of specification of goods/services in new trademark application. According to a notice issued by the Trademark Office on July 2nd, 2002, when the applicant of a trademark application is required to make amendment on the specification of goods/services by way of official action, he should only make amendment according to what is suggested by the examiner. The applicant should not add any new goods or services, nor should he replace the goods or services by new descriptions that have broader coverage of goods/services than the original ones.

The old practice had been, when the examiner required amendment of a specification of goods/service, the applicant could not only replace term that was not acceptable, but also add new ones that might not be covered within the previous one.It is therefore advisable for applicants to seek attorneys' advice on classification and specific description of goods/services before filing, particular when there is a multi-class filing designating goods/services that are difficult to classify.