Goods and Services Identification Checklist: Classes, Scope, and Specimen Fit

By Casey Scott McKay · 2025-10-19

This checklist runs a United States trademark identification of goods and services from client intake to portfolio maintenance in eleven phases, each item written as an action you can complete and tick off. It covers the intake interview that produces facts you can draft from, the triage that strikes giveaways and internal tools before they become classes you pay for, the offering-to-class map, the ID Manual versus custom-wording decision and its $200-per-class surcharge, the sentence architecture the USPTO accepts, and the specimen feasibility test that decides whether a class is filed under Section 1(a) or Section 1(b). It then handles the fee build under the January 2025 fee structure, the Trademark Center filing mechanics that trigger avoidable surcharges, the indefiniteness and classification office action including examiner's amendment practice by phone, the scope ratchet and divisional practice under 37 C.F.R. 2.71(a) and 2.87, post-registration audits and the $250 deletion fee, and the master identification that keeps a portfolio and its Madrid filings consistent. One invented matter, Ridgeline Provisions and its SALTWICK mark across six classes, is carried through every phase with real numbers, real dates, and the actual identification text filed. It closes with a Common Mistakes section, a Deadlines at a Glance table, and cross-references to the doctrinal article and practitioner's guide in the same cluster.

IP and Technology > Trademarks | Checklist | Published 19 October 2025 - Updated 3 April 2026 | Casey Scott McKay - marksy.us

Summary. Eleven phases that take an identification of goods and services from the intake call to the fifth-year maintenance filing: harvesting the client's actual revenue lines, striking the things that are not goods or services at all, mapping what survives to international classes, choosing between ID Manual entries and custom text, drafting the sentence, proving you can specimen every Section 1(a) class, building the fee, filing it without paying surcharges you did not choose, answering an indefiniteness or classification requirement, surviving a post-registration audit, and keeping one identification consistent across a portfolio and abroad. One invented matter runs through all eleven with dates, dollar figures, and the filed text. The doctrine lives in the companion article; this is the working list.

Keywords: identification of goods and services · nice classification · international class · id manual · specimen fit · 37 cfr 2.71 · tmep 1402 · custom identification surcharge · class 9 downloadable software · class 42 saas · class 35 retail services · filing basis · intent to use · statement of use · indefiniteness refusal · classification requirement · examiner's amendment · request to divide · post-registration audit · trademark center

What this checklist is for

You are about to write the sentence that fixes a trademark's reach. Everything downstream reads it: the examining attorney searching for conflicts, the opposer sizing up a fight, the CBP officer deciding whether a seizure is authorized, the buyer's counsel pricing the portfolio, and the district judge comparing your goods to the defendant's. Under 37 C.F.R. § 2.71(a) you may narrow that sentence forever and broaden it never, which means filing day is the only day you have full discretion.

Who should use it. Prosecution counsel filing a U.S. application under § 1(a) or § 1(b); in-house counsel reviewing outside counsel's draft; anyone answering an identification or classification requirement; anyone reconciling a registration against revenue before a § 8 declaration.

What you need before you start.

The client's last twelve months of invoices, the SKU list, or the pricing page — whichever actually exists.
The product roadmap, with named owners and committed dates.
Photographs or screenshots of every package, label, hangtag, order page, and service page currently live.
The USPTO Trademark ID Manual open in one tab and Marksy's register search open in another.
A blank plain-text file for the master identification. You will reuse it for years.

Not covered here. Why classification is administrative rather than substantive, and the case law that makes the identification the operative text — that is The Nice Classification System: Why Your Identification of Goods Decides Your Trademark's Reach. The reasoning behind each move, with model language and decision trees, is Drafting an Identification of Goods and Services: A Practitioner's Guide to the ID Manual, Scope, and Amendment. This document assumes both and does not re-teach them.

The matter we carry through. Ridgeline Provisions, Inc., a 22-person Boulder, Colorado company with $7.4 million in revenue, sells bone broth and soup concentrates into regional grocery, makes seasonings, runs an online store carrying its own goods plus knives and cookware from four other brands, co-packs private-label broth for three restaurant groups, teaches ticketed cooking classes, and plans a meal-planning app for 2027. The mark is SALTWICK. Every phase below shows what Ridgeline actually did.

The phases at a glance

| Phase | You finish with | Typical time | Government fee | | --- | --- | --- | --- | | 1. Intake | A line-item list of what is sold, each tied to a payer, a date, and a document | 45-90 min | — | | 2. Triage | Goods, services, and a struck list with reasons in writing | 30 min | — | | 3. Class mapping | Every surviving line assigned an international class | 1-3 hrs | — | | 4. ID Manual or custom | A per-class decision and a surcharge estimate | 30-90 min/class | — | | 5. Drafting | Final identification text, client-confirmed line by line | 2-4 hrs | — | | 6. Specimen test | A named specimen for every § 1(a) class, in the file | 1 hr | — | | 7. Basis and fee build | Class count, basis per class, and the exact filing cost | 45 min | Computed here | | 8. Filing | Serial numbers, receipts, and a docketed calendar | 1 hr | $2,900 for Ridgeline | | 9. Office action | A complete response or an examiner's amendment | 3-8 hrs | $0-$225+/class | | 10. Post-registration | An audit-proof identification and an honest § 8 | 2 hrs/year | $325/class at year 5-6 | | 11. Portfolio | A versioned master identification and a Madrid plan | 1 hr/year | — |

Phase 1 — Intake: get the invoices before you get the pitch

[ ] Request the last twelve months of invoices, the SKU list, or the pricing page, plus the roadmap and any live packaging photographs, before you schedule the call.
- Why. "What do you sell?" produces the investor pitch. An invoice produces a line item with a payer, a price, and a date.
[ ] Walk the client down a representative invoice line by line and record, for each line, what the customer received and what they paid for.
[ ] For each line, ask whether the customer is buying a thing they take away and keep or an activity you perform for them. Split any line that is both.
[ ] For each line, ask who the activity is performed for. Write the answer down.
- Why. A service must be a real activity rendered for the benefit of someone other than the applicant, and it must actually be rendered, not merely planned.
- Authority. Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357-60 (Fed. Cir. 2009); TMEP § 1301.01(a)(ii).
[ ] For every software line, ask whether the customer downloads or installs anything, or whether everything happens on your servers. Record which one the customer pays for.
[ ] For every software line, make the client finish the sentence "it lets the user ______" using a verb. Then ask what subject matter it is about.
- Authority. TMEP § 1402.03(d) (function and, where relevant, field of use).
[ ] Capture a first-use-anywhere date and a first-use-in-commerce date for every line, and ask what document proves each.
[ ] Ask what the company will sell in the next eighteen months that it does not sell today, who owns that launch, and what date is committed.
[ ] Ask what the company gives away with the logo on it, and what internal tools run on the same codebase.
- Trap. These two questions look like small talk. They are how you find the two lines a founder will otherwise insist on filing and cannot ever specimen.
[ ] Ridgeline. The 6 August 2024 call produced ten lines in fifty minutes. Seven survived Phase 2.

Phase 2 — Triage: strike what is not a good or a service

[ ] Strike promotional giveaways. Merchandise handed out free is advertising, not goods sold in commerce.
- Ridgeline. Logo aprons and canvas totes distributed at farmers markets. Struck.
- Trap. A Class 25 application for giveaway apparel dies twice — once on use in commerce, and again on ornamentality if a large chest print is the only use. TMEP § 1202.03.
[ ] Strike internal functions. Performing an activity for yourself is not rendering a service to others.
- Ridgeline. The inventory tool built in-house. Struck.
[ ] Strike free content that exists only to sell your own goods.
- Ridgeline. The free SALTWICK Kitchen Club email newsletter. Struck — it advertises the broth; it is not an independent Class 41 publishing service.
[ ] Strike selling your own goods through your own website, unless third-party goods are genuinely on the shelf.
- Why. Retail store services must be rendered for others. A checkout button on your own site is a sales channel, not a Class 35 service.
- Ridgeline. Survives — the SALTWICK store carries knives and enameled cookware from four unaffiliated brands.
[ ] For anything the client wants to "certify" or license to a membership group, stop and ask whether it is a certification or collective mark rather than a trademark. Different application, different governance documents, different identification rules.
- Authority. 15 U.S.C. §§ 1054, 1127; TMEP §§ 1306, 1304.
- Where to go. Certification, Collective, and Membership Marks Toolkit and the Certification and Collective Mark Application Checklist.
[ ] Write one sentence of reasoning next to every struck line and send the struck list back to the client.
- Why. The struck list is the cheapest document in the file and the best evidence you have if anyone later argues the identification was padded.

Phase 3 — Class mapping: assign a number to every surviving line

[ ] For each surviving line, decide good or service, then who it is rendered for, then function, then subject matter. Only then reach for a class number.
- Trap. Practitioners who start with the class number bend the description to fit the drawer. The description is the deed; the class is the drawer. 15 U.S.C. § 1112; 37 C.F.R. § 2.85(f).
[ ] Run the software delivery-model question before you write a word: downloadable or recorded copy in the customer's possession is Class 9; functionality running on your servers is Class 42; a business outcome delivered through software may belong in the class of the underlying service.
- Authority. In re JobDiva, Inc., 843 F.3d 936, 942-43 (Fed. Cir. 2016); TMEP § 1402.03(d).
- Trap. If the company ships both a downloadable client and a hosted service, that is two classes, not a choice. You cannot amend a Class 9 good into a Class 42 service later. 37 C.F.R. § 2.71(a).
[ ] Confirm the edition of the Nice classification in force on your filing date, and check whether any of your goods moved in a recent revision.
- Authority. 37 C.F.R. § 2.85(a); TMEP § 1401.02(a). Corrective eyewear moved from Class 9 to Class 10 in NCL (13-2026); existing registrations were not disturbed.
[ ] Check the classification traps specific to your industry before you commit: edible salt is Class 30 while industrial salt is Class 1; dietary supplements are Class 5, not Class 29 or 30; beer is Class 32 while wine and spirits are Class 33; printed manuals are Class 16 while downloadable e-books are Class 9; software maintenance is Class 42, not Class 37.
[ ] For kits, sets, and anything the client calls a "system," identify the components. The Office will not accept "system" standing alone.
- Authority. TMEP §§ 1401.05(a), 1401.05(d).
[ ] If any goods are federally regulated — cannabis above the 0.3 percent delta-9 THC hemp threshold, many vape and kratom products, certain supplement claims — resolve lawful use before you draft. No wording rescues an unlawful-use filing, and vagueness invites a request for information.
- Where to go. The Lawful Use Requirement, the Regulated-Industry Trademark Filing Checklist, and the Regulated Industry Branding Toolkit.
[ ] Ridgeline's map.

| Line | Class | Why | | --- | --- | --- | | Bone broth, soup concentrates, prepared soups | 29 | Broths and soups | | Seasonings, spice blends, cooking salt | 30 | Edible salt and seasonings; not Class 1 | | Online store carrying third-party knives and cookware | 35 | Retail services genuinely rendered for others | | Private-label broth co-packing for restaurant groups | 40 | Custom manufacture to another's specification | | Ticketed cooking classes, in person and online | 41 | Education and training | | Meal-planning app, launching 2027 | 9 | Downloadable; § 1(b) |

Phase 4 — ID Manual or custom text: the $200-per-class decision

[ ] Search the USPTO Trademark ID Manual by verb and class, not by product name. Search "dispatching," "co-packing," "planning" — not "SALTWICK app."
[ ] On every candidate entry, read three fields: the class, the status, and the effective date. Entries are added, revised, and retired as Nice editions change.
- Authority. TMEP § 1402.04.
[ ] Apply one rule without sentiment: take the entry if it accurately describes what the client sells; if it does not, write your own and pay the surcharge. Never reshape the product to fit the entry.
- Why. A borrowed entry that misdescribes the goods produces, in sequence, an identification you cannot specimen, a statement you cannot sign, and a registration a stranger can attack for a filing fee.
[ ] Understand the fee cliff: editing a single character of a pre-approved entry makes that class free-form and attaches the full $200 surcharge to the class. There is no partial credit, so if you are deviating at all, deviate as much as accuracy requires.
[ ] Count characters per class. Each additional 1,000 characters of free-form text in a class costs another $200.
[ ] Search the register for wording examiners have accepted in your technology area — as intelligence, not authority. Prior acceptance binds no one.
- Authority. In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001).
[ ] Check your own portfolio first and reuse prior wording verbatim where it is still accurate.
- Why. Consistency across a family is worth real money at audit and at diligence. See Phase 11 and the Solo and Small Firm IP Practice Toolkit for the file structure that makes reuse a four-minute job.
[ ] Ridgeline. Classes 29 and 30 take pre-approved entries verbatim: no surcharge. Classes 35, 40, 41, and 9 all require a field-of-use or specificity edit: four classes free-form, $800 in surcharges.

Phase 5 — Draft the sentence

[ ] Build every identification on the same architecture: [class-anchoring preamble] , namely, [specific items] [function] [field] [optional restriction].
[ ] Use "namely" when the preamble is a category and what follows is the complete, closed list. Use "featuring" for the content a service carries. Use "in the nature of" for a service with no tidy name.
[ ] Delete every open-ended word: including, such as, and the like, etc., and related goods, accessories, products, goods, system, solutions, platform, technology, devices, equipment, apparatus.
- Why. Open-ended language makes the boundary of the registration unknowable, which is exactly what the definiteness requirement exists to prevent. TMEP § 1402.01.
[ ] Remove any third-party trademark. You may not define your goods by someone else's brand.
[ ] Write in the adjacent formats and variants you might plausibly add — "in-person and online," "classes, seminars, and workshops," "downloadable and recorded." They are free today and unavailable tomorrow.
- Authority. 37 C.F.R. § 2.71(a); TMEP §§ 1402.06, 1402.07.
[ ] Decide, per class, whether to add a restriction on channels, purchasers, price point, or field — and add it only if you would defend it in five years.
- Why. An unrestricted identification is presumed to travel in every ordinary channel to every ordinary purchaser, and an unrestricted service is judged by its least sophisticated potential buyer.
- Authority. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268 (Fed. Cir. 2002); Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014).
- Trap. A restriction that restricts nothing measurable is decoration. Tying goods to a person, a mission, or a brand story does not limit channels, price, or buyers, and will not defeat a § 2(d) refusal. In re i.am.symbolic, llc, 866 F.3d 1315, 1327 (Fed. Cir. 2017).
[ ] Remember that breadth is a trade, not a virtue: a broad identification encompasses every narrower species within it, which helps you in enforcement and hurts you in examination.
- Authority. In re Hughes Furniture Industries, Inc., 114 USPQ2d 1134, 1137 (TTAB 2015).
[ ] Send the draft to the client as a bulleted list per class with a plain-English gloss, and require a line-by-line yes or no to the question: do we sell this today?
- Trap. A client will "approve" a PDF they never opened. The email answering the specific question is the file's best defense against a later allegation that the identification was inflated, and it is why the § 8 five years from now will be honest. Compare Fraud on the Trademark Office: What In re Bose Actually Requires.
[ ] Ridgeline's filed text.

Class 29 (§ 1(a), first use 4 March 2021) — Bone broth; soup concentrates; prepared soups

Class 30 (§ 1(a), first use 4 March 2021) — Seasonings; spice blends; cooking salt

Class 35 (§ 1(a), first use 17 June 2023) — Online retail store services featuring cookware, kitchen knives, kitchen textiles, and prepared foods

Class 40 (§ 1(a), first use 12 January 2024) — Custom manufacturing of bone broths, soup concentrates, and prepared soups to the order and specification of others

Class 41 (§ 1(a), first use 9 September 2022) — Educational services, namely, conducting in-person and online classes, seminars, and workshops in the field of cooking, food preparation, and home food preservation, and distribution of course materials in connection therewith

Class 9 (§ 1(b)) — Downloadable mobile application software for planning meals, generating shopping lists, and scheduling home food preparation tasks

Phase 6 — Specimen feasibility: name the specimen or drop the class

[ ] For every § 1(a) class, name in writing — today, in the file — the exact specimen you would submit. If you cannot, that class is not a § 1(a) class.
[ ] Confirm one acceptable specimen per class, showing the mark as actually used in commerce on or in connection with the goods or services as identified.
- Authority. 37 C.F.R. § 2.56(a); TMEP §§ 904.03, 904.04 (goods), 1301.04 (services).
[ ] For goods, reject advertising. You need labels, tags, packaging, containers, or a webpage that functions as a point of sale — the mark near a depiction of the goods, with a price and an actual way to order.
- Authority. In re Siny Corp., 920 F.3d 1331, 1336 (Fed. Cir. 2019).
[ ] For webpage specimens, capture the URL and the access or print date on the face of the image. A screenshot without them is refused on sight.
- Authority. 37 C.F.R. § 2.56(c).
[ ] Compare the mark on the specimen to the drawing character for character. Mark mismatch is one of the most common specimen refusals and the least excusable.
- Where to go. Specimen Refusals: Why the USPTO Rejected Your Proof of Use.
[ ] Reject mock-ups, renderings, printer's proofs, and photocopies of the drawing. Digitally created images of products that do not yet exist are not use in commerce.
[ ] For services, confirm the material shows the mark used in connection with the service as recited — a login screen proves almost nothing about "custom manufacturing to the order of others."
[ ] Save every specimen as a JPG or PDF at filing quality, name the file by class, and keep the original.
[ ] Move any class that fails this test to § 1(b) rather than filing it under § 1(a) and hoping.
- Why. Filing § 1(a) for goods you have not shipped is the most reliable way to convert a routine registration into a fraud allegation. In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009), sets the intent standard; Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d 1361 (TTAB 2014), shows how readily intent is inferred from an applicant who cannot document a single sale.
[ ] Ridgeline's specimen inventory.

| Class | Specimen on hand | Verdict | | --- | --- | --- | | 29 | Photograph of the 32 oz carton showing SALTWICK, contents, and net weight | Good | | 30 | Photograph of the spice tin label and shelf shipper | Good | | 35 | Store page showing SALTWICK header above third-party knives, with prices and cart | Good — third-party goods visible | | 40 | Co-packing agreement cover page plus the private-label case label bearing "Made by SALTWICK" | Adequate; add the website co-packing page | | 41 | Class registration page with mark, dates, price, and enrollment button | Good | | 9 | None — app does not exist | Correct: this is why it is § 1(b) |

Phase 7 — Filing basis, class count, and the fee build

[ ] Assign a basis per class: § 1(a) use in commerce, 15 U.S.C. § 1051(a), where the specimen exists today; § 1(b) intent to use, 15 U.S.C. § 1051(b), where it does not. Never claim both for the same item.
- Authority. 37 C.F.R. § 2.34(b).
[ ] Before filing any § 1(b) class, put three objective documents in the file: the board-approved roadmap naming the offering, the resource allocation, and a dated memo naming the launch owner.
- Why. Bona fide intent must be objective and contemporaneous; a founder's later testimony that he always meant to is not enough.
- Authority. M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1376 (Fed. Cir. 2015); see also Kelly Services, Inc. v. Creative Harbor, LLC, 846 F.3d 857, 869-72 (6th Cir. 2017) (lack of bona fide intent taints the affected items, not necessarily the whole filing).
- Where to go. Intent-to-Use Applications: Claiming a Trademark Before You Sell a Thing.
[ ] Decide one multi-class application or several. Government fees are identical; risk concentration is not. Split out any class you expect to fight over, any class destined for sale, and any § 1(b) class in an otherwise use-based filing.
- Trap. A mixed-basis multi-class application holds the § 1(a) classes hostage to the § 1(b) class's Notice of Allowance clock. Either file the ITU class separately on day one or budget for a division later.
[ ] Re-run the clearance search class by class against the drafted identification, not against the mark alone, and pay attention to cross-class hits.
- Where to go. Trademark Clearance Search Checklist: From Knockout to Written Opinion, Running a Full Trademark Clearance Search, and Trademark Clearance Searching: What a Knockout Search Can and Cannot Tell You.
[ ] If the search surfaces a live conflict, decide now whether a channel or field restriction separates you. This is the last cheap moment to add one.
[ ] Build the fee line by line and show the client the number before you file.

| Item | Rate | Ridgeline | | --- | --- | --- | | Base application fee, § 1 or § 44 | $350 per class | 6 × $350 = $2,100 | | Custom (free-form) identification surcharge | +$200 per affected class | 4 × $200 = $800 | | Free-form length surcharge | +$200 per additional 1,000 characters, per class | $0 (longest class 412 characters) | | Insufficient-information surcharge | +$100 per class | $0 (avoided) | | § 66(a) Madrid extension of protection | $600 per class | n/a | | Total at filing | | $2,900 |

[ ] Avoid the $100-per-class insufficient-information surcharge by confirming entity type, citizenship, domicile address, mark description, translation and transliteration statements, prior-registration claims, and the verified declaration.
- Where to go. Pre-Filing Trademark Application Checklist.
[ ] Ridgeline. Filed 11 September 2024 as two applications: Classes 29, 30, 35, 40, and 41 under § 1(a) in one multi-class filing, and Class 9 under § 1(b) as a separate single-class filing.

Phase 8 — Filing mechanics

[ ] File electronically through the USPTO's Trademark Center. Paper is not an option except in narrow cases — grandfathered filings, nationals of Trademark Law Treaty countries that have not acceded to the Singapore Treaty, non-traditional specimens that cannot be transmitted electronically, and petitions to the Director.
- Authority. 37 C.F.R. §§ 2.21, 2.23(a), 2.23(c), 2.32, 2.33, 2.147; 37 C.F.R. § 2.56(d).
[ ] Enter the identification class by class, pasting from your master text file. Do not retype.
[ ] Check the free-form flag on each class in the fee preview before you pay. If you expected two free-form classes and the form shows four, you edited two entries you thought you had left alone.
[ ] Verify the character count per class against your own count.
[ ] Verify that the § 1(b) class shows § 1(b) and that every § 1(a) class carries the correct first-use-anywhere and first-use-in-commerce dates.
- Trap. First-use dates can be corrected later only by sworn statement, and only to dates the evidence supports. Guessing at a date on the form is a false statement waiting for a deposition.
[ ] Save the filing receipt, both serial numbers, and the exact final identification text to the matter file, and store the specimens alongside them.
[ ] Docket the office action window off the filing date as a placeholder, plus a six-month status check.
- Where to go. Docketing Deadlines: Never Miss a Renewal and What Happens After You File: The Examination Timeline.

Phase 9 — The identification office action

[ ] Read the action twice and separate requirements (identification, classification, formalities) from refusals (substantive grounds under § 2). Both must be answered in the same paper.
- Trap. A response that argues the § 2(d) refusal brilliantly and ignores the identification requirement is incomplete, and the application goes abandoned on the deadline even though you filed something. 37 C.F.R. § 2.65(a).
[ ] Address every numbered item, in the examiner's order, under its own heading.
[ ] Run the scope test before you propose any wording: would an ordinary reader of the original identification, on the filing date, have understood the proposed items to fall within it? If no, you are asking to broaden, and you will be refused.
- Authority. 37 C.F.R. § 2.71(a); TMEP §§ 1402.06, 1402.07.
[ ] Never accept the examining attorney's suggested wording reflexively. Suggestions are drawn from generic ID Manual entries and are frequently broader and vaguer than what you filed.
- Why. Trading your field of use for a two-week saving buys permanently wider § 2(d) exposure and a permanently vaguer enforcement radius.
[ ] If the wording is genuinely definite and the examiner has misread a technical term, argue with evidence — trade glossaries, industry publications, third-party registrations using the term.
- Authority. In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990). This is a narrow exception; where the words are plain English, Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 942 (Fed. Cir. 1990) governs and you are stuck with them.
[ ] Call or email the examining attorney and try to close identification and classification issues by examiner's amendment — no formal response, no extension fee, weeks saved. Read your proposed wording aloud slowly, explain scope in one sentence, and ask directly whether it resolves the requirement.
- Authority. TMEP § 707.
- Trap. Do not authorize wording on the phone that you have not scope-tested. Ask for the examiner's exact text and confirm by email the same day.
[ ] Before agreeing to a classification requirement that adds a class, price it: you owe the base fee plus any surcharge, and the new class gets its own conflict search, which can generate a § 2(d) refusal that did not exist an hour ago.
[ ] Where a refusal hits only some classes, price a request to divide against deletion. Deletion costs the priority date forever; a division costs $100 per new application and keeps the parent's filing date.
- Authority. 37 C.F.R. § 2.87; TMEP § 1110.
[ ] Confirm the review route before filing anything after a final action: a requirement for a definite identification is reviewable on ex parte appeal to the TTAB, while a pure classification dispute goes by petition to the Director under 37 C.F.R. § 2.146.
- Authority. TBMP § 1201.05; 15 U.S.C. § 1071.
- Where to go. Ex Parte Appeal Checklist, Taking an Ex Parte Appeal, and Appealing a Final Refusal.
[ ] Assemble the paper using the Office Action Response Checklist and the Response to Office Action — Template; pull argument language for co-pending refusals from Responding to a §2(d) Likelihood-of-Confusion Refusal, How to Overcome a Descriptiveness §2(e)(1) Refusal, and the Office Action Response Toolkit.

Ridgeline's office action, 19 May 2025. Three items. (1) Class 9 — "scheduling home food preparation tasks" indefinite; examiner suggests "downloadable computer software for use in database management." Declined on the record and counter-proposed: "Downloadable mobile application software for planning meals, generating shopping lists, and creating and displaying reminders for home food preparation and cooking tasks." Within scope; field preserved. (2) Class 40 — examiner questions whether the co-packing is a Class 40 service or Class 29 goods. Resolved by telephone on 3 July 2025 with a two-line amendment confirming manufacture to third-party recipes under third-party brands; entered as an examiner's amendment; no fee, no new class. (3) Class 30 — § 2(d) refusal over a prior registration for a similar mark covering seasoning mixes. Class 30 divided out on 28 July 2025 for $100. The remaining four classes published 4 November 2025 and registered 20 January 2026; the child application settled nine months later on a coexistence agreement with a field-of-use restriction.

Phase 10 — After registration: audits, deletions, and the honest § 8

[ ] Diary the § 8 window the day the certificate issues, and diary a reconciliation ninety days before it.
[ ] At each reconciliation, put the identification next to the revenue report in three columns: identified item, revenue in the last three years, specimen on hand.
[ ] Delete anything with no revenue and no documented intent to resume — before you file the § 8, not after.
- Why. Deleting goods after the declaration is filed but before it is accepted costs $250 per class. That fee exists to punish the filer who swears first and reconciles later.
- Authority. 37 C.F.R. § 2.161(c).
[ ] Expect an audit. The USPTO randomly selects § 8 and § 71 filings in multi-item registrations and demands proof of use for additional specified goods; fail to produce it and the Office asks for proof on more.
- Authority. 37 C.F.R. § 2.161(b), (h).
[ ] Answer an audit with a dated specimen for each audited item plus a declaration, or delete the item. There is no third option.
[ ] Treat non-use as a partial risk, not an all-or-nothing one: three consecutive years of non-use without intent to resume is prima facie abandonment, and a registration can be cancelled as to some goods and survive as to others.
- Authority. 15 U.S.C. § 1127.
- Where to go. Use It or Lose It and the Trademark Abandonment Evidence Checklist.
[ ] Assume a stranger may petition. Ex parte expungement reaches goods never used; ex parte reexamination reaches goods not in use as of the relevant date. Both are decided on documents by an examiner, and neither requires the petitioner to name the real party in interest.
- Authority. 15 U.S.C. §§ 1066a, 1066b.
[ ] For any § 1(b) class still on the intent-to-use track, calendar the Statement of Use clock and do not file an SOU for something you are not selling.
- Where to go. Statement of Use Filing Checklist, From Notice of Allowance to Registration, and the Request for Extension of Time to File a Statement of Use — Template.
[ ] Run the sworn filings off the reconciliation, not off the certificate: Filing a Section 8 Declaration of Continued Use, the Section 8 & 9 Renewal Checklist, and the Section 8 Declaration — Template. The whole maintenance arc sits in the Trademark Maintenance and Survival Toolkit.
[ ] Ridgeline. Class 9 received a Notice of Allowance on 13 January 2026 with a Statement of Use due 13 July 2026; the app slipped, so a first six-month extension was filed on 10 July 2026 for $125. Government spend to date: $2,900 at filing, $100 to divide, $125 for the extension, with $150 due on the Statement of Use.

Phase 11 — Portfolio and international consistency

[ ] Maintain one versioned master identification per product line — class, exact wording, ID Manual term IDs, date last reviewed — and start every new application from it.
- Why. Uniform wording makes audit answers reusable, makes diligence fast, and makes a missing class visible on one screen. Drift hides holes.
- Where to go. Building and Managing a Trademark Portfolio, the Annual Trademark Portfolio Review Checklist, and the Trademark Portfolio Inventory — Template.
[ ] File the house mark on the broader, more durable identification and the product mark on the narrower one. Product marks get retired; house marks accumulate.
[ ] Before any outbound Madrid filing, confirm the international application does not exceed the scope of the U.S. basic application or registration. Your U.S. identification is the ceiling.
- Authority. 37 C.F.R. § 7.11(a)(5); TMEP § 1902.02(e).
- Where to go. Filing an International Trademark via the Madrid Protocol, Designating Countries Under the Madrid System, the Madrid Protocol Application Checklist, and the International Trademark Toolkit.
[ ] For an inbound § 66(a) extension of protection, plan to cut and only cut: you may not add goods and you may not change WIPO's classification.
- Authority. 37 C.F.R. § 2.85(d); TMEP § 1904.02(c). See WIPO Office Actions and Provisional Refusals and The Madrid Protocol: How International Registration Works.
[ ] Record the identification in every downstream instrument that quotes it — CBP recordation, coexistence agreements, licenses, security interests — and check that each matches.
- Where to go. Stopping Counterfeits at the Border, the Trademark Coexistence Agreement — Template, and the Trademark Assignment Recordal Checklist.
[ ] Once a year, read the whole portfolio's identifications against the revenue report and the roadmap in one sitting, and flag gaps as filings rather than as regrets.
- Where to go. Trademark Due Diligence Checklist and the Trademark Portfolio Management Toolkit.

Common Mistakes

| Mistake | What it costs | The fix | | --- | --- | --- | | "Computer software" with no function stated | Automatic indefiniteness requirement, class indeterminate | State the verb, then the field. TMEP § 1402.03(d) | | Filing Class 35 for selling your own goods | Refusal; the class was never available | File the goods in their own classes; reserve 35 for genuine third-party retail | | Filing Class 9 when the product is hosted, or Class 42 when it is downloadable | New application, new priority date; no amendment across | Run the delivery-model question in Phase 3 | | Accepting the examiner's suggested wording | Permanently broader exposure and a vaguer enforcement radius | Counter-propose; decline politely on the record | | Deleting a refused class instead of dividing it | The priority date, permanently | $100 division under 37 C.F.R. § 2.87 | | Padding a § 1(a) class with roadmap items | Expungement, reexamination, audit failure, fraud allegations | Move them to § 1(b) with documented bona fide intent | | Filing giveaway merchandise as goods | Specimen and ornamentality refusals | Strike it in Phase 2 | | A screenshot specimen with no URL or date | Immediate refusal | 37 C.F.R. § 2.56(c) — capture both | | A restriction that restricts nothing measurable | Loses the § 2(d) argument anyway | Restrict channel, buyer, price, or field. i.am.symbolic, 866 F.3d at 1327 | | Answering only the refusal and not the requirement | Abandonment; $150 petition to revive | Address every numbered item | | Deleting goods after the § 8 is filed | $250 per class | Reconcile 90 days before filing | | Six registrations with six variants of the same wording | Diligence requests and a price adjustment | One versioned master identification |

Deadlines at a Glance

| Trigger | Deadline | Fee | Authority | | --- | --- | --- | --- | | Response to a non-final office action, § 1 or § 44 application | 3 months from issuance | $0 | 37 C.F.R. § 2.62(a) | | Single extension of that response period | Requested before the 3-month date | $125 per class | 37 C.F.R. § 2.62(a) | | Response to an office action in a § 66(a) application | 6 months; no extension available | $0 | 37 C.F.R. § 2.62(a) | | Response to a final action, or notice of appeal | 3 months from issuance, extendable as above | Per-class appeal fee | 37 C.F.R. § 2.142(a); 15 U.S.C. § 1071 | | Petition to revive an abandoned application | 2 months from the notice of abandonment | $150 | 37 C.F.R. § 2.66 | | Request to divide, use-based application | From filing until approval for publication | $100 per new application | 37 C.F.R. § 2.87(b), (c) | | Request to divide, § 1(b) application | Between the Notice of Allowance and the Statement of Use, or with it | $100 per new application | 37 C.F.R. § 2.87(c) | | Opposition period after publication | 30 days, extendable on request | Extension fees vary | 15 U.S.C. § 1063 | | Statement of Use after a Notice of Allowance | 6 months from the NOA | $150 per class | 15 U.S.C. § 1051(d) | | Extension of time to file the Statement of Use | Each 6 months, up to five extensions (36 months total) | $125 per class | 15 U.S.C. § 1051(d)(2) | | § 8 declaration of continued use | Between the 5th and 6th anniversary of registration; 6-month grace with surcharge | $325 per class | 15 U.S.C. § 1058 | | § 9 renewal, filed with § 8 | Within the year before each 10-year anniversary; 6-month grace | $650 per class combined | 15 U.S.C. § 1059 | | Deleting goods after a § 8 or § 71 is filed but before acceptance | Any time before acceptance | $250 per class | 37 C.F.R. § 2.161(c) | | Ex parte reexamination petition (not in use as of the relevant date) | First 5 years of registration | Per-class petition fee | 15 U.S.C. § 1066b | | Ex parte expungement petition (never used) | Between the 3rd and 10th year of registration | Per-class petition fee | 15 U.S.C. § 1066a |

Confirm current pendency and fee amounts on the USPTO's own dashboards before you promise a client a date or a number; the three-month response window and its extension mechanics are unpacked in The 3-Month Office Action Deadline.