Although the word “namely” appears in over 4 million trademark applications according to the U.S. Patent and Trademark Office (USPTO) Trademark Search portal, experience—and the recent Trademark Trial and Appeal Board (TTAB) decision, In Re Locus Link USA, No. EXPUNGEMENT 2022-100 (TTAB 2024)—suggests that many do not appreciate the legal significance of the term.

This decision arose from Locus Link USA’s appeal of the USPTO’s cancellation of its registrations for the SMARTLOCK word mark (Reg. No. 5376466) and SMARTLOCK composite mark (Reg. No. 5376467), both of which were registered for use in connection with “[c]omponents for air conditioning and cooling systems, namely, evaporative air coolers,” in International Class 11.

The USPTO cancelled the SMARTLOCK registrations as part of an expungement proceeding under the Trademark Modernization Act of 2020. An expungement proceeding is instituted by the USPTO Director in connection with a trademark registration where evidence supports a finding that the registered mark has never been used in commerce or in connection with some or all of the goods or services recited in the registration. The USPTO can begin the proceeding on its own or a third party can initiate the proceeding. Third parties must request the proceeding between three and ten years after the registration date, provide documentary evidence to support the claim of nonuse, and pay a fee of $400 per class. Once the request has been made, the third party is not a part of the proceeding and it can take 5 to 12 months for a determination to be made on the mark.

The ‘Namely’ Factor

Registrant Locus Link USA had been using the marks with connectors that link two elements of an air cooling system via metal tubing. It admitted that it had never used the marks with fully-manufactured evaporative air coolers. The USPTO cancelled the SMARTLOCK marks on the basis that the marks needed to be used with “evaporative air coolers,” the specific goods that came after the term “namely” in the goods description, rather than “components for […] evaporative air coolers”. That is, “namely” overwrote everything preceding “namely” rather than just “air conditioning and cooling systems”. Locus Link USA counterargued that the connectors fell within the scope of the Class 11 goods description because they were “components for air conditioning and cooling systems,” the first portion of the description.

The TTAB affirmed the USPTO’s decision to cancel the registrations. The Board concluded that the registrant’s product, connectors for air conditioning systems, did not qualify as “evaporative air coolers” and were therefore outside the scope of the goods description. The TTAB’s decision turned on the meaning of the term “namely” used in the class description.

Starting at a high level, a trademark’s class description must “state common names for goods or services, be as complete and specific as possible, and avoid indefinite words and phrases.” TMEP § 1402.03(a). Use of the word “namely” in an identification of goods or services is acceptable only when the words that follow it define and fall within the scope of the introductory wording that precedes “namely”. For example, a proper use of namely would be “alcoholic beverages, namely, wine.”  The purpose of the term namely in a class description is to add particularity to the description. Section 1402.03(a) of the Trademark Manual of Examining Procedure (TMEP) requires that the wording after “namely” must further define the introductory wording that precedes “namely,” using definite terms within the scope of the introductory wording. When namely is used in a class description, it limits the scope of a broader term to the specific items listed thereafter.

In this case, the description “components for air conditioning and cooling systems, namely, evaporative air coolers” was interpreted to cover only fully manufactured evaporative air coolers, not components for evaporative air coolers. “[E]vaporative air coolers” modified the wording “components for air conditioning and cooling systems” to be considered such a component. Therefore, the Board held that the connectors, though components for evaporative air coolers in the general sense, are not encompassed by the identification.

For practitioners familiar with patents, one can compare the use of “namely” with means-plus-function elements such as those beginning with “means for”. 35 USC 112(f) allows for reciting patent claim elements based on their function (e.g., “means for fastening” instead of “a fastener” or “screws or nails”). Such elements seem very broad on their face, but risk being quite narrow because they are interpreted as covering the corresponding structure in the specification and equivalents thereof. Accordingly, patent applicants have largely moved away from using such language, although risks of unintentionally receiving this treatment remain. “Namely” operates similarly in that a recited category containing “namely” may read much more broadly than the actual scope. For example, at least some readers might interpret “clothing, namely, vests” as having some scope beyond “vests,” but the legal scope would be limited to vests in this example. Indeed, loosely using “means for” or “namely” remains a trap for the unwary in aping conspicuous features of historic patents and trademark registrations without appreciating the import of those terms.

It also worth noting that the TTAB was not swayed by Locus Link USA’s argument that the Office’s acceptance of the original specimen is evidence that its use with connectors falls within the identification. The Board rejected this argument, holding that neither the Director nor the Board is bound by prior decisions of Examining Attorneys and the acceptance of specimens by an Examining Attorney is not a definitive determination on use.

The TTAB also explained in its decision that when a mark is used for a component of a larger product, and not the entire product, the identification must include the common name of the component, the fact that the product is a component for a finished product, and the common name of the finished product. See also TMEP § 1402.05(a).

The Lesson: Be Precise

The In re Locus Link USA decision underscores the importance of using precise and accurate language when preparing trademark applications. This decision emphasizes that trademark descriptions must specifically describe the goods or services the mark will be used with. For example, if a mark will be used with components of a product rather than the product itself, the description should explicitly state this distinction. Additionally, when drafting class identifications, one should keep in mind that the term “namely” acts as a restrictive qualifier, narrowing the scope of the goods or services described, as what comes after “namely” is how the mark must be used. As seen in this case, using “namely” improperly can result in a profoundly different scope of the identification of goods than the natural reading and probably a different scope than intended by the applicant. Beyond drafting identifications, this decision also serves as a reminder that once a mark registers, it still may remain subject to scrutiny, and it is good practice to proactively gather and retain evidence of actual use in commerce to support the registered goods or services.

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