GUIDANCE FOR USERS

This page contains information regarding ID Manual features, classification and identification practice, and tips relating to specific goods and services. Click on the links below to browse content in each category.

 

ID MANUAL FEATURES

Search Results Hit List

ID Manual search results are displayed in a list format, known as the "hit list." For a detailed explanation of the hit list, see the Explanation of Search Results Hit List and Column Headings section of the Searching the Trademark ID Manual page.

 

How to Filter Search Results

For information about filtering search results, please see the Searching the Trademark ID Manual page.

 

Entry Status

Each entry in the ID Manual is given a particular letter to indicate the status of the entry. Entries with a status of "A" (Added), "M" (Modified), or "X" (Example) are active entries which are acceptable in the class specified.

The letter "A" is used to indicate that the entry has been added to the ID Manual and has not been subsequently modified.

The letter "M" is used to indicate an acceptable entry which has been modified since originally entered into the ID Manual. "M" entries are generally accompanied by a note which explains the reason for the modification. For example, if a particular good or service was reclassified, the entry for that good or service would include the letter "M" and a note explaining the reason for the reclassification.

The letter "X" was recently added to the existing status codes, "A," "M," and "D" (Deleted). The letter "X" indicates an entry that is an example of an acceptable identification of goods or services. These "X" entries often include more detail or specificity than is required for an acceptable identification. Thus, while an "X" entry may be used by an applicant, the entry may not be beneficial to a wide range of applicants and will not generally provide any guidance about identification and classification principles. As noted in TMEP §1402.01, identifications that include lengthy descriptions of characteristics of goods and services are generally inappropriate.

The letter "D" indicates an entry that has been deleted from the ID Manual as of the indicated effective date. These entries are generally accompanied by a note which provides the reason for deleting the entry. "D" entries are generally not acceptable under USPTO ID Policy, but you should read the Note to verify whether or not a particular entry is acceptable.

For information on filtering search results according to the status of the entry, please see the How to Filter Search Results and Filtering Search Results Using the Checkboxes sections of the Searching the Trademark ID Manual page.

 

Brackets and Parentheses

The ID Manual includes two types of brackets - square brackets "[ ]" and curly brackets "{ }."

Square Brackets: Wording included in square brackets in an ID Manual entry is informational in nature and does not need to be part of the identification unless the applicant wishes to include it or the examining attorney decides that the information would be helpful for likelihood of confusion purposes. Generally, brackets should not be used in identifications of goods and services. TMEP §1402.12. Bracketed wording will be automatically deleted from the identification in a TEAS Plus application. In a TEAS Regular, TEAS RF, or paper application, the examining attorney may delete bracketed material from an identification by examiner's amendment without obtaining applicant approval. See TMEP §707.02.

The following are examples of ID Manual entries with language in brackets that explains the entry but does not have to be included in the final identification of goods or services in order to be acceptable.

 

ID Manual Entry Acceptable Identification
Jackets [clothing] Jackets
Vegetable oils and fats [for food] Vegetable oils and fats
Garbage collection [trash pickup only] Garbage collection
Literary agencies [management] Literary agencies

Curly Brackets: Curly brackets are used in ID Manual entries to indicate the type of information that an applicant must specify to render the identification acceptable. Curly brackets usually include wording such as "specify" or "indicate" to convey the type of information required and generally include examples of acceptable wording. The information in the curly brackets must be provided by the applicant as part of the identification. For example, acceptable identifications based on the ID Manual entry "Pharmaceutical preparations for {specify disease or condition to be prevented or treated or the health goal to be achieved}" include "Pharmaceutical preparations for treating diabetes" and "Pharmaceutical preparations for the prevention of osteoporosis."

In certain cases, the ID Manual may include a broader entry without curly brackets and a more specific entry with curly brackets for the same good or services. The applicant may choose to use the broader entry without brackets if it accurately describes the goods or services. For example, the ID Manual includes an entry for "Nursing services" and includes a bracketed entry for "Nursing services in the field of {specify, e.g., pediatrics, geriatrics, etc.}." In that case, "Nursing services" is an acceptable identification in Class 44 without a specification of the field. However, the ID Manual includes the bracketed entry for applicants wishing to provide greater specificity than the minimum required. If an entry with curly brackets is chosen, the bracketed information requested must be indicated or specified.

Parentheses:  Generally, parentheses should not be used in identifications of goods and services because it may cause confusion with the USPTO's method of indicating goods or services that have been deleted from a registration or which are not claimed in an affidavit of incontestability under 15 U.S.C. §1065. See TMEP §1402.12. However, parentheses may be used in an identification to merely explain or translate the matter preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification. Id. The ID Manual includes entries featuring parentheses used in such a permissible explanatory manner, e.g., "Sash bands for kimono (obi)" and "Automatic teller machines (ATM)." Although bracketed wording will be automatically deleted from the identification in new applications filed under TEAS Plus, parenthetical information will not be automatically deleted from a TEAS Plus application. Please note that TEAS forms other than new applications, such as the Response to Office Action (ROA) form and Voluntary Amendment form, submit identification wording exactly as entered or amended and do not automatically delete bracketed information.

 

Notes

ID Manual notes serve a wide variety of purposes. For example, notes include information about why an entry was modified or deleted. Also, in some cases, notes describe the function or purpose of the goods or services named in the description. If a note is available for a particular identification, the letter "Y" will be displayed in the Note column of the search results page. Perform a single left mouse click over the letter "Y" to view the note. Use the left arrow button of the internet search browser to return to the search results page. If a note is not available, the letter "N" will appear in the Note column.

When a note is included at the time an entry is added to the ID Manual as either an "A" or "X" status, the note itself is not dated. Notes added after the entry is added to the ID Manual generally include the date the note first appears. Notes are added to an entry when it is modified or deleted to provide explanation or justification for the modification or deletion.

References made to the Nice Alphabetical List in notes refer to the edition and version in effect as of the date of the note. For example, the entry "Tattoo machines" with an effective date of March 20, 2008 includes a note that the goods were transferred to Class 8 from Class 7 due to an entry in the Nice Alphabetical List; since the effective date of the entry is March 20, 2008, the reference to the Nice Alphabetical List refers to the 9th Edition of the Nice Agreement.

Entries that are identified as Nice Alphabetical List entries but have an "X" status are acceptable, but not preferable in grammatical format. For example, "Machines and apparatus for carpet shampooing, electric" appears in the ID Manual with an "X" status. However, it is preferable for the applicant to choose the corresponding "A" status entry "Electric machines and apparatus for carpet shampooing" which incorporates the adjective into the identification and complies with English grammar rules. Nevertheless, both entries are acceptable.
 

Fill-in Manual Entries

The ID Manual includes descriptions with fill-in portions which allow applicants to specify additional information about the selected goods or services, such as material content, subject matter, or area of use. The fill-in portion generally consists of the words “specify,” “indicate” or the like within curly brackets “{ },” and commonly includes examples of acceptable wording. For example, the fill-in portion for the description “Printed periodicals in the field of {indicate subject matter}” permits the applicant to set forth the subject matter of the printed periodicals where indicated. For a further discussion of the use of “curly brackets” in the ID Manual, see Brackets and Parentheses.

When a fill-in entry is selected in the TEAS Regular, TEAS RF or TEAS Plus electronic application system, the bracketed information will be replaced by a highlighted text box in which the applicant can insert the required information. Additional goods or services and broad words, such as “including” or “and the like,” should not be included in the fill-in portion. Instead, the specific information requested should be provided where indicated by the fill-in portion. In limited circumstances, additional fees may be required for the improper use of a fill-in entry for TEAS Plus applications. For more information regarding additional fees, see TMEP §819.01(g).

The ID Manual may include broader entries without fill-in portions which would not require the same level of detail as a fill-in entry. You may choose to use the broader entry without the fill-in portion, if accurate. For example, “Medical services” is an acceptable ID Manual entry in Class 44 without specification of the medical field. The ID Manual also includes an entry for “Medical services in the field of {specify, e.g., surgery, oncology, nephrology, etc.}” in Class 44 for applicants who wish to specify the field. You may also wish to consult the Notes of the ID Manual to determine whether the additional specificity requested by a fill-in entry is required or is merely optional. If an applicant chooses to use the fill-in entry, the fill-in portion must be completed with the relevant information.

In certain cases, the information requested in the fill-in portion is needed in order to properly classify the goods or services or for the identification to be definite. For example, the description “Figurines of {indicate stone, concrete, marble}” in Class 19 requires that one of the named materials be included in the identification because classification of figurines depends upon the material content of the goods. A similar entry exists in Class 20 but with different materials that justify classification in Class 20, i.e. “Figurines of {indicate bone, ivory, plaster, plastic, wax, wood}.” When the information requested in the fill-in portion is necessary for classification or definiteness purposes, the Manual will not contain a general entry for the goods, such as “figurines” without an indication of material content.

In some service entries, the information requested in the fill-in portion determines classification and the entry itself is designated as “000” for the “Class.” Such entries are not available for selection using the TEAS Plus application. For more information, please see “000” Entries below.
 

GENERAL NOTICES

The ID Manual provides a list of identifications of goods or services from which an applicant may choose to accurately identify the goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. The entries of the ID Manual also provide general guidance as to the appropriate classification of particular goods and services. However, the ID Manual is not intended as an exhaustive list of goods and services for which an applicant may seek registration.

Applicants choosing to file an application using the TEAS Plus electronic form are required to use an existing ID Manual entry. See TMEP §819.01(g). Applications filed using the TEAS Regular or TEAS RF electronic forms or filed on paper are not limited to the exact wording of the ID Manual entries; for non-TEAS Plus applications, the applicant may choose to use their own wording to accurately identify the goods and/or services. The identification must be identified with sufficient specificity to ensure that the goods and/or services are appropriately classified. See Nice Classification below. An identification of goods and/or services must be specific, definite, clear, accurate, and concise. TMEP §1402.01. Lengthy descriptions of characteristics or uses are not appropriate.  For general guidance regarding the identification and classification of goods and services, see TMEP Chapter 1400.

Although entries in the ID Manual are generally acceptable as written, the examining attorney may require an amendment to an otherwise definite identification in certain circumstances. For example, see TMEP §1401.07 (Specimen Discloses Special Characteristics) and §1203.02(e)(ii) (identification requirement in connection with potentially deceptive trademarks).

 

Nice Classification

For applications filed on or after September 1, 1973, goods and services are classified according to the international classification of goods and services. See TMEP §1401.02. International trademark classification, and the headings of the international trademark classes, are established by the Committee of Experts of the Nice Union and set forth in the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Classification") published annually by the World Intellectual Property Organization ("WIPO") on its website: www.wipo.int.  In 2013, the Committee of Experts began annual revisions to the Nice Classification. The annual revisions, which are published electronically and enter into force on January 1 each year, are referred to as versions and identified by edition number and year of the effective date (e.g., "Nice Classification, 10th edition, version 2013" or "NCL 10-2013"). The Nice Classification classifies goods into classes 1 to 34 and services into classes 35 to 45.

The Nice Agreement general remarks, class headings, and explanatory notes for each international trademark class, set forth in TMEP §1401.02(a), provide guidance in determining the appropriate classification of goods and/or services. The Alphabetical List of the Nice Classification also provides information about the appropriate class for particular goods or services; however, entries of goods or services in the Alphabetical List may require further specificity to comply with USPTO policy and practice. See TMEP §1401.05. The Alphabetical List may be accessed through the WIPO website at www.wipo.int/classifications/nice/en.

 

TM5 - The "T" Entries

The USPTO works together with its international partners, the Japanese Patent Office ("JPO"), the European Union Intellectual Property Office (“EUIPO”), the Korean Intellectual Property Office ("KIPO"), and the State Administration for Industry and Commerce (“SAIC”) of the People’s Republic of China, to establish and maintain a list of identifications of goods or services which are acceptable to all offices. This collective effort is known as the "TM5" Trademark Identifications and Classifications Project (formerly known as "Trilateral"). The mutually agreed upon identifications are included in ID Manual and are designated by the letter "T" in the "TM5" column of the hit list.  The TM5 column will be blank if the entry has not been accepted by all of the TM5 partners.  For further information about TM5 entries, see TMEP §1402.04.

"000" Entries

Entries designated with a "000" in the "Class" field are entries primarily for services for which the classification will be controlled by the specific subject matter of the services. These entries do not appear in the TEAS Plus version of the ID Manual because a class number cannot be assigned to these entries and correct classification is required by the TEAS Plus system. For more information on filing an application using TEAS Plus, see TMEP §819 et. seq.

 

Certain Entries Unavailable in TEAS Plus ID Manual

Certain entries included in the ID Manual outside of the TEAS Plus application form are not available for use within TEAS Plus. The TEAS Plus version of the ID Manual intentionally does not include the following: (1) items classified in Classes A, B, or 200, because those marks are not eligible for filing under TEAS Plus; (2) any listings that are designated with a "000" in the Class field, because correct classification is required under TEAS Plus and classification for these listings varies according to the subject matter or additional information provided within the listing; and (3) the Class 25 listing of "Clothing, namely, ...," because this entry is too open-ended, and could result in items being listed that do not truly fall within this class. TEAS Plus applications require users to select listings for specific clothing items, e.g., shirts, pants, etc., consistent with USPTO identification policy for Class 25 clothing.

 

Use of the Words "Applicant" or "Registrant" in the Identification is Not Permitted

The words "applicant" or "registrant" must not appear in the identification of goods or services. Before registration, use of the term "registrant" is inaccurate, and, after registration, use of the term "applicant" is inaccurate. For further information, see TMEP §1402.09.

 

Registered Marks Are Generally Not Permitted in the Identification

Registered trademarks generally may not be included in an identification of goods or services. See TMEP §1402.09.  Use of a registered mark to identify a type of good or service is inappropriate, because registered marks indicate the source of the goods or services rather than the common name of a particular type of good or service.   An identification which includes a registered mark of a third party refers to a particular brand of a product or service rather than the generic type of the product or services.   The identification should merely set forth the common name of the goods or services.  See TMEP §1402.01.   If a registered mark has been inappropriately included in the identification, the examining attorney will require that the registered mark be replaced with generic terms.
 

GUIDANCE ON IDENTIFYING AND/OR CLASSIFYING SPECIFIC GOODS AND SERVICES

TMEP Guidance on Identifying and/or Classifying Specific Goods and Services

The TMEP provides guidance on identifying and/or classifying certain goods or services, including the following:

Identification TMEP Section
Kits TMEP §1401.05(a)
Gift Baskets TMEP §1401.05(a)
Items Sold as a Unit TMEP §1401.05(a)
Medical vs. Non-medical Goods TMEP §1401.05(b)
Systems TMEP §1401.05(d)
Food Additives TMEP §1401.11(c)
Dietetic Food/Beverages and Meal Replacements TMEP §1401.11(d)
Marketing Services TMEP §1401.11(e),1402.11(i)
Computer Programs TMEP §1402.03(d)
Publications TMEP §1402.03(e)
On-line Publications TMEP §1402.11(a)(x)
Computer Services TMEP §1402.11(a) et. seq.
Content Provider Services TMEP §1402.11(a)(ii)
Telecommunications Connections TMEP §1402.11(a)(iii)
Web Traffic Services TMEP §1402.11(a)(iv)
Computer Installation and Repair TMEP §1402.11(a)(v)
On-line Retail Services TMEP §1402.11(a)(vi)
Computer Entertainment Services TMEP §1402.11(a)(vii)
Computer Design and Development Services TMEP §1402.11(a)(viii)
Database Services TMEP §1402.11(a)(ix)
Electronic Storage TMEP §1402.11(a)(xi)
Data Hosting TMEP §1402.11(a)(xi)
Cloud Computing TMEP §1402.11(a)(xi)
Information Services TMEP §1402.11(b)
Association Services and "Promoting the Interest of" Services

TMEP §1402.11(c)

 

Non-monetary Charitable Services TMEP §1402.11(d)
Consulting Services TMEP §1402.11(e)
Distribution of Videotapes, Audiotapes, etc. TMEP §1402.11(f)
Recorded Entertainment Services TMEP §1402.11(g)
"Bonus Programs" TMEP §1402.11(h)
Issuing Awards TMEP §1402.11(j)
Sales TMEP §1402.11

Information on identifying and/or classifying specific goods and services is provided below. This information will be periodically revised or supplemented.
 

Guidance on Identifying and/or Classifying Specific Goods
 


 

Animals

For classification purposes, identifications that include animals as goods should indicate whether the animals are live or not live. The Class 29 Class Heading includes “meat, fish, poultry and game.” According to the corresponding Explanatory Note, “Class 29 includes mainly foodstuffs of animal origin...which are prepared for consumption or conservation.” Live animals are specifically excluded from Class 29 and, instead, are included as part of the Class 31 Class Heading. Thus, an identification for goods such as “sardines” is indefinite and overly broad for classification purposes because it is unclear whether “sardines” identifies live animals in Class 31 or animals that are not live in Class 29. However, when used in their singular form in Class 29, animal names such as “chicken,” “turkey,” “pheasant” and “quail” are presumed to be types of meat, fish, poultry and game. If listed in their plural form in Class 29 (e.g., “chickens,” “turkeys,” “pheasants” and “quails”), ambiguity arises as to whether the goods are live animals that should be classified in Class 31.

Please note that it is not necessary that the wording “not live” be used when it is otherwise clear that the animals are not live. For example, “tinned sardines” and “canned sardines” would each be acceptable identifications in Class 29 without further qualification.

Leeches are an exception to the general rule that all live animals are classified in Class 31. Specifically, the Nice Alphabetical List classifies “Leeches for medical purposes” in Class 5 without any indication that the leeches are live, based on their specialized medical purpose. Live leeches other than for medical purposes (e.g., for use as live bait, for scientific research purposes, etc.) are classified in Class 31.
 

Awards

Under USPTO identification and classification policy, the term “awards” is indefinite and overbroad. The nature of the awards must be specified (1) to enable a comparison of the goods/services and analysis of trade channels for possible likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d) and (2) to enable proper classification of the goods.

Common types of awards are medals and printed certificates, which are classified according to function, and trophies or plaques, which are classified according to material composition. Some examples of definite and properly classified goods for use as awards are:

- Trophies of common metal for use as awards, in Class 6;

- Medals for use as awards, in Class 14;

- Printed certificates for use as awards, in Class 16;

- Plaques of wood for use as awards, in Class 20;

- Plaques of crystal for use as awards, in Class 21.

The nature of the awards (e.g., medals, printed certificates, etc.) controls the classification. The purpose of the awards is not relevant for classification purposes.
 

Implants

For classification purposes, identifications that include implants as goods should indicate whether the implants are made of living tissue in Class 5 or made of artificial materials in Class 10.

The Nice Alphabetical List includes "Surgical implants comprised of living tissues" in Class 5 and "Surgical implants comprised of artificial materials" in Class 10. In accordance with this distinction, under USPTO policy, an identification of "surgical implants" is considered indefinite if it does not specify whether the surgical implants are comprised of living tissue in Class 5 or artificial materials in Class 10 as part of the identification.

Please note that it is not necessary that the wording "made of living tissue" or "made of artificial materials" be included in the identification when (1) it is otherwise clear that the implants are made of living tissue or artificial materials or (2) the identification for the implants is currently listed in the ID Manual. For example, "Biological implants, namely, a vital processed human or animal connective tissue" is listed in the ID Manual and is an acceptable identification in Class 5. By analogy, "implants comprised of animal connective tissue" is also an acceptable identification in Class 5. Additionally, "dental implants" and "cochlear implants" are listed in the ID Manual (with a corresponding note) and are acceptable identifications in Class 10 without further qualification.

 

Meal Replacements

Prior to the 10th Edition of the Nice Agreement, identifications such as “meal replacement bars” and “meal replacement snacks” were acceptable in Class 5.  However, such broadly-worded identifications are now considered indefinite for classification purposes and are no longer acceptable.  Under the current 10th Edition of the Nice Agreement (effective January 1, 2012), meal replacement foods adapted for medical use are classified in Class 5, and meal replacement foods not adapted for a medical purpose are classified in Classes 29, 30, 31, 32, or 33. 

Identifications referring to non-medical “meal replacement” foods in Classes 29-33 must specify the following: (1) the nature or form of the goods (e.g., bars, drinks, shakes, snacks, etc.) and (2) the primary ingredient of the goods (e.g., chocolate, granola, nuts, etc.).  For example, “Fruit-based meal replacement bars” is an acceptable identification in Class 29, and “Chocolate-based meal replacement bars” is an acceptable identification in Class 30.  For further information about the types of food or beverage products included in Classes 29-33, see the Class Headings and Explanatory Notes of the Nice Agreement in TMEP 1401.02(a).

If the meal replacement foods are adapted for medical use or for treatment of a medical condition, the goods will be classified in Class 5, and the identification must include the wording “for medical purposes” or similar language clearly indicating the medical condition being treated (e.g., “for weight loss purposes”), in addition to including the two requirements noted above for non-medical “meal replacement” foods.  For example, “Fruit-based meal replacement bars for medical purposes” and “Chocolate-based meal replacement shakes for weight loss purposes” are acceptable identifications in Class 5.

 

Plastic Sheets and Films in Classes 16 and 17

Under the Nice Agreement, plastic sheets and films are generally classified by purpose, namely: for wrapping and packaging (Class 16), for packing [e.g., padding and stuffing] (Class 17), other than for wrapping (Class 17), and in extruded form for use in further manufacture (Class 17). For proper classification, identifications should indicate the purpose of these goods.

Plastic Sheets and Films in Class 16

The Class 16 Class Heading includes “plastic materials for packaging (not included in other classes),” and the Class 16 Explanatory Note specifically includes, “plastic sheets … for wrapping and packaging.” As examples, the following entries appear in the Nice Alphabetical List in Class 16:

• Plastic film for wrapping

• Plastic cling film, extensible, for palletization

• Plastic bubble packs for wrapping or packaging

• Sheets of reclaimed cellulose for wrapping

Plastic sheets and films in Class 16 are limited to the purposes of “wrapping” and “packaging.” In this context, plastic sheets and films for “wrapping” and “packaging” refers to the outer coverings of goods or the merchandise packaging of goods (e.g., “gift wrapping paper,” “food wrapping plastic film”). In contrast, plastic sheets and films in Class 17 are for “packing” purposes. In this context, plastic sheets and films for “packing” refers to cushioning, stuffing or insulation material. While the terms “packaging” and “packing” are often used interchangeably in common parlance, these terms are construed as having distinct meanings (i.e., functions) under the Nice Agreement, and, thus, important classification consequences.

Class 16 plastic sheets and films for “wrapping” or “packaging” purposes may be for commercial use as well as household use, as household or commercial use does not affect classification of these goods under the Nice Agreement. In fact, the Nice Alphabetical List includes “plastic cling film, extensible, for palletization” in Class 16, which refers to commercial/industrial use of the plastic films (i.e., pallet-sized loads) and reinforces the fact that a “wrapping” or “packaging” function necessitates classification of plastic sheets and films in Class 16.

To ensure the proper classification of plastic sheets and films in Class 16, identifications for these goods must indicate a “wrapping” or “packaging” purpose. For example, “plastic film for packaging food” and “plastic sheets for wrapping food” are both acceptable identifications in Class 16.
 

Plastic Sheets and Films in Class 17

Generally, Class 17 includes two types of plastic sheets and films; semi-processed plastic material and plastic for packaging (other than for “wrapping”).
 

Semi-processed plastic material

“Plastics in extruded form for use in manufacture” (included in the Class 17 Class Heading of the Nice Agreement) and “plastics, being for use in manufacture in the form of sheets, blocks and rods” (included in the Class 17 Explanatory Note). As examples, the following entries appear in the Nice Alphabetical List in Class 17:

• Plastic substances, semi-processed

• Cellulose acetate, semi-processed

“Semi-processed” refers to plastic material that has been partially processed and is no longer “unprocessed” or “raw” plastic material in Class 1. Class 17 semi-processed plastic material will be further manufactured into finished plastic products and (later) classified accordingly (e.g., plastic cutlery in Class 8, plastic aprons in Class 25, plastic dolls in Class 28). “Plastics in extruded form” refers to Class 17 plastic material in semi-finished forms, such as bars, blocks, pellets, rods, sheets and tubes, for use in further manufacturing.

As previously explained, Class 17 plastic materials are generally characterized by their semi-processed form and are typically in the interim state between unprocessed or raw plastic material in Class 1 and finished plastic products in various classes. To ensure appropriate classification in Class 17, an acceptable identification should indicate either the “semi-processed” nature of the plastic or its “use in further manufacture” (or other similar language). For example, “plastics in extruded form for use in further manufacturing” and “semi-processed plastic in the form of films, sheets, tubes, bars, or rods” are both acceptable identifications in Class 17.
 

Plastic for packaging (other than for “wrapping”)

“Packing, stopping and insulating materials” (included in the Class 17 Class Heading) and “padding and stuffing materials of rubber and plastics” (included in the Class 17 Explanatory Note). As examples, the following entries appear in the Nice Alphabetical List in Class 17:

• Packing [cushioning, stuffing] materials of rubber or plastics

• Padding materials of rubber or plastics/Stuffing of rubber or plastic

Plastic sheets and films in Class 17 are limited to the purposes of “packing, stopping and insulating.” As illustrated by the bracketed information “[cushioning, stuffing]” above, in this context, “packing” materials refers to plastic sheets and films that are used as cushioning or stuffing material. Unlike the Class 16 “wrapping” and “packaging” materials that are purposed for use as outer wrapping or as merchandise packaging, the term “packing” connotes an additional cushioning, padding, stuffing or insulating characteristic.

The following entries also appear in the Nice Alphabetical List in Class 17:

• Plastic film other than for wrapping/Plastic film, not for wrapping

• Sheets of regenerated cellulose, other than for wrapping

As indicated by these Nice entries, “plastic sheets and films, other than for wrapping” (or “packaging”) are classified in Class 17. However, this particular broad Nice classification principle allows for identifications that may not be sufficiently definite under USPTO specificity policy. For example, an identification of “plastic film other than for wrapping” would not be acceptable in the U.S. because such broad wording would encompass disparate goods (e.g., “plastics sheets for use in further manufacturing,” “plastic film for packing and stuffing,” and “plastic film to be applied to windows”). Thus, for specificity and likelihood of confusion considerations, any Class 17 identification for “plastic sheets and films, other than wrapping or packaging” should clearly indicate the “non-wrapping” (or “non-packaging”) purpose of the plastic sheets and films. For example, “plastic film used to cover and protect objects while painting” in Class 17.

To summarize, in order to ensure proper classification in Class 17, identifications for plastic sheets and films should clearly indicate that such goods are: (1) semi-processed, or for use in further manufacture, or (2) are for packing, cushioning, stuffing and/or insulating purposes.

 

“Providing Downloadable…”

Any identification that starts with “Providing downloadable…” is indefinite and may include goods or services in multiple classes. For example, the identification “Providing downloadable comic books, downloadable anti-virus software, and downloadable music” is indefinite because the word “Providing” indicates that the mark is being used in connection with services, yet the word “downloadable” indicates that the mark is being used in connection with digital media goods. It is unclear whether the identification describes services or goods, and it must be clarified. For example, the indefinite and overly broad identification “providing downloadable comic books, downloadable anti-virus software, and downloadable music” may encompass “downloadable comic books, downloadable anti-virus software, and downloadable music” in Class 9 and/or “retail store services featuring downloadable comic books, downloadable anti-virus software, and downloadable music” in Class 35.

 

Resins

Under the Nice Agreement, resins are classified according to whether they are unprocessed artificial resins (Class 1), raw natural resins (Class 2), or semi-finished resins (Class 17).

Resins in Class 1 are limited to those that are both unprocessed and artificial. The word “unprocessed” indicates that the resins have not been semi-worked or semi-finished into the form of sheets, blocks, bars, etc. for use in further manufacturing. Artificial resins are chemically modified natural resins or polymerized synthetics of natural resins. Unprocessed artificial resins are classified in Class 1 because they are essentially in the nature of chemicals. To ensure appropriate classification of resins in Class 1, an acceptable identification must indicate that the resins are (1) “unprocessed” and (2) “synthetic” or “artificial” (or the generic name for the synthetic/artificial resin must be specified). For example, “unprocessed synthetic resins” and “unprocessed polyethylene resins” are each an acceptable identification in Class 1.

The Class Heading for Class 2 includes “raw natural resins.” Raw (a/k/a “unprocessed”) natural resins are solid or semisolid viscous substances exuded by certain trees and plants. These resins are classified in Class 2 because they are often used as ingredients in Class 2 goods, such as lacquers, varnishes, and inks. To ensure appropriate classification of resins in Class 2, an acceptable identification must indicate that resins are “raw” or “unprocessed” and “natural.” For example, “unprocessed natural resins” is an acceptable identification in Class 2. Although natural resins are most often sold in raw or unprocessed form, if a natural resin has been semi-processed into a shape, such as pellets, rods, bars, ingots, etc., the goods are classified in Class 17 because of that processing.

Class 17 includes natural or synthetic resins that are in the form of semi-finished products, such as pellets, rods, films, sheets, etc. These goods have been semi-worked and are used for further manufacture. To ensure appropriate classification of resins in Class 17, the identification must indicate the goods are “semi-finished” (or equivalent wording, such as “semi-worked,” “semi-processed,” “in extruded form,” etc.) or the particular extruded form must be specified. For example, “semi-processed resins,” “semi-processed acrylic resins” and “resins in bars, blocks, pellets, rods, sheets and tubes for general industrial use” are acceptable identifications in Class 17.

 

Sports Training Simulators and Training Apparatus

Electronic sports training simulators use computer technology to re-create conditions of a game enabling the user to practice using sports equipment or practice other skills used for playing the game. These goods are not video game machines that consumers would find in arcades or otherwise use for entertainment or recreational purposes. The function and purpose of the electronic sports training simulators are comparable to the function and purpose of the “Simulators for the steering and control of vehicles,” which appears in the Nice Alphabetical List in Class 9. Therefore, effective February 28, 2013, the entry “Electronic sports training simulators” has been modified to “Electronic sports training simulators [computer hardware and software-based teaching apparatus]” and transferred from Class 28 to Class 9 in order to clarify the function and purpose of the goods and fully comply with the Nice Classification System.

The transfer of electronic sports training simulators from Class 28 to Class 9 impacts the identification and classification rules for sports training apparatus. Specifically, the broad wording “Sports training apparatus for {specify use, e.g., improving football security, increasing baseball pitching speeds, etc.}” in Class 28 and other similarly worded descriptions are no longer acceptable because they are overbroad and include computer hardware and software-based apparatus in Class 9 and sports equipment in Class 28. Identifications describing sports training apparatus must provide sufficient detail about the function and purpose of the goods for classification purposes.

For example, prior to February 28, 2013, the description “Sports training apparatus for improving baseball bat swings” was acceptable under the ID Manual guidance at that time. However, beginning February 28, 2013, that description is considered indefinite and may include goods in Classes 9 and 28. “Sports training apparatus featuring electronic sensors and software to analyze bat swings and electronically display results” is classified in Class 9 as computer hardware and software-based goods, while “Sports training apparatus featuring a baseball bat, ball, and a tee for improving bats swings” is classified in Class 28 as sports equipment. Although both types of sports training apparatus have the same overall purpose of improving baseball bat swings, they function very differently. The function of the goods controls the classification, and the different functions justify the different classifications.
 

Weights

Weights are classified according to their function or purpose, based on application of the basic classification principles found in the General Remarks of the Nice Agreement. See TMEP §1401.02(a).

As a general rule, when attempting to determine the proper classification of weights, one should determine the function or purpose of the weights and look for the wording in the Class Headings and Explanatory Notes that encompasses the particular function or purpose. See TMEP §1401.02(a). When the function or purpose of the weights is not mentioned in the Class Headings or Explanatory Notes, the goods may be analogized to other goods that are found in the Nice Alphabetical List in order to determine their proper class. For example, the function and purpose of “ankle weights” is to add resistance to the lower body for the purpose of strengthening the legs and hips. The Class Heading for Class 28 includes “sporting articles,” which covers “ankle weights” because they are used for physical exercise. (See http://www.livestrong.com/article/309278-the-definition-of-ankle-weights/.) Additionally, the function and purpose of “ankle weights” is analogous to “dumb-bells” and “bar-bells,” which appear in the Alphabetical List in Class 28 as sporting articles. Therefore, “ankle weights” are also properly classified in Class 28.

When the function or purpose of the weights is not covered by the Class Headings, Explanatory Notes or Nice Alphabetical List, and when the other guidance in the General Remarks is not applicable, then it is appropriate to classify the weights according to their material composition.

“Throw weights” is a good example that illustrates how the hierarchy of classification principles applies for classification of goods. “Throw weights” are weights attached to the end of a rope or other line. “Throw weights” are used by recreational tree climbers and other hobbyists. They are also used by tree trimmers and arborists when performing their jobs. The function of “throw weights” is to make the end of the rope heavier so that it does not get tangled in the tree branches. This particular function is not covered by the Class Headings, Explanatory Notes or Nice Alphabetical List. However, “throw weights for recreational use” are in Class 28, according to their purpose, because goods for sporting, recreational, and leisure activities are generally classified in Class 28. On the other hand, “throw weights for commercial or industrial use” cannot be classified according to their function or purpose. Therefore, those goods should be classified according to material composition. The following three entries included in the ID Manual illustrate these basic classification principles:
 

• Metal throw weights for commercial or industrial use, in Class 6

• Non-metal throw weights for commercial or industrial use, in Class 20

• Throw weights for recreational use, in Class 28

 

Guidance on Identifying and/or Classifying Specific Services

Customization of Goods for Others
Design and Development Services
Monitoring Services
Outsourcing Services
“Providing Downloadable…”
Providing Educational or Instructional Information
Providing Information about Food and Drinks
Provision of Facilities
Research Services
“Sales” and Retail/Wholesale Services
Technical Information and Consultation

 

Customization of Goods for Others

The service of customizing goods to the specification of others is generally classified according to the nature of the activity underlying the customization. For example, customization of computer software is in Class 42 because the activity underlying the customization is computer programming in 42. In other words, the applicant has to re-program the software so that it meets the customer's criteria. On the other hand, customization of hardware is in Class 37 because the activities underlying the customization are upgrading and modification in 37. Customization usually involves repair and maintenance of existing finished goods in Class 37, while custom manufacturing of goods in Class 40 involves transforming unfinished or semi-finished goods into finished goods.

Design and Development Services

As a general rule, design and development services directly related to tangible items or visual displays, such as machinery and graphic arts, are in Class 42. On the other hand, design and development of intangibles is classified according to the nature of the intangible. For example, design of intangibles in the nature of advertising, insurance policies or educational curriculum is in Classes 35, 36 and 41, respectively. Although you can touch the paper on which the advertisement, policy, or curriculum, is printed, those concepts are not tangible objects like machinery, or visual displays like graphic arts.

 

Monitoring Services

Monitoring services which primarily involve electronic data collection, quality control, or testing and analysis of physical properties are generally classified in Class 42. The primary nature of the services must be reflected in the recitation. When the monitoring services do not primarily involve electronic data collection, quality control, or testing and analysis of physical properties in Class 42, the primary purpose of the monitoring services should then be incorporated into the recitation, and the services should be classified according to their primary purpose.

The relevant dictionary definition of “monitoring” is continuous observation or recording of an activity or device by a person or by technological means. Monitoring activities are generally classified in Class 42 because they typically involve electronic data collection, quality control, and testing and analysis. For example, monitoring services that involve observation of equipment or software to ensure proper functioning are classified in Class 42 because they are quality control services (e.g., “monitoring the performance of websites of others to improve scalability”). Monitoring services that involve observation of physical conditions to determine any changes thereto are classified in Class 42 because they entail testing and analysis of physical properties (e.g., “monitoring mercury levels in lakes and oceans”). Electronic monitoring services involve the use of computers, sensors, and other technology to electronically detect and measure or record a function or an activity. These data collection type services are classified in Class 42 because they are computer technology services (e.g., “electronic monitoring of sewer systems using computers and sensors”).

While basic monitoring services are generally classified in Class 42, monitoring services that are rendered for a particular purpose are generally classified according to that purpose. For example, “monitoring consumer credit reports for the business purpose of tracking a consumer’s credit worthiness” is classified in Class 35. In this case, the monitoring service involves more than the mere observation of the consumer’s activities, but also provides business analysis and evaluation. As an additional example, “monitoring heart rates for the medical purpose of diagnosing atrial fibrillation” is in Class 44. In this case, the monitoring services involve detecting and recording of the heart rate and rendering medical analysis of the recorded data to determine a proper diagnosis. Other examples of monitoring activities that are classified according to their purpose include monitoring of security alarms for the safety purpose of dispatching emergency personnel when the alarm sounds in Class 45 and trademark monitoring for the legal purpose of protecting the trademark owner’s legal rights in Class 45.

Monitoring services that are rendered for a particular purpose should specify the purpose in the recitation and must be classified according to the overall purpose of the activity - not according to the thing being monitored. Consistent with this principle, “monitoring of fashion trends for television entertainment purposes” is classified in Class 41, according to the television entertainment purpose, and not classified in Class 45, according to the fashion trends. Also, “monitoring of computer systems for security purposes” is classified in Class 45, according to the security purpose, and not classified in Class 42, according to the computer systems.

Although monitoring services are most frequently classified in Classes 35, 42, and 45, as previously explained, monitoring services may be classified in other classes depending on the purpose of the activity.

 

Outsourcing Services

Generally, identifications of services relating to “outsourcing” should clarify whether the outsourcing services (1) consist of business assistance in the nature of arranging of service contracts or procurement of goods or services for others in Class 35 or (2) involve particular services rendered by an outsource service provider (a company providing goods and/or services on a contractual basis), which are classified in any service class, based on the particular service specified.  Definite wording must be used to describe the nature of the activities that are being rendered for others by outsource service providers, and those activities must be classified according to their nature or purpose.  Please note that “outsourcing services” is an acceptable identification in Class 35; however, the specific wording “outsourcing services” refers only to the arranging of service contracts or procurement of goods or services for others, and not to the provision of other types of activities for third parties.
 

“Providing Downloadable…”

Any identification that starts with “Providing downloadable…” is indefinite and may include goods or services in multiple classes. For example, the identification “Providing downloadable comic books, downloadable anti-virus software, and downloadable music” is indefinite because the word “Providing” indicates that the mark is being used in connection with services, yet the word “downloadable” indicates that the mark is being used in connection with digital media goods. It is unclear whether the identification describes services or goods, and it must be clarified. For example, the indefinite and overly broad identification “providing downloadable comic books, downloadable anti-virus software, and downloadable music” may encompass “downloadable comic books, downloadable anti-virus software, and downloadable music” in Class 9 and/or “retail store services featuring downloadable comic books, downloadable anti-virus software, and downloadable music” in Class 35.

 

Providing Educational or Instructional Information

The service “providing information in the field of education” includes information about education, such as academic standards, class schedules, and pedagogy, and is, therefore, properly classified in Class 41. However, the services “providing instructional information...” or “providing educational information…” are classified according to the subject matter of the information. See TMEP §1402.11(b). All information can be characterized as instructional or educational. Thus, describing information as “instructional” or “educational” is not sufficient to justify classification in Class 41. For example, “providing educational information about healthcare” is classified in Class 44 because the information pertains to healthcare (and healthcare services are generally classified in Class 44), whereas “providing information in the field of education regarding healthcare” is classified in Class 41 because the information pertains to the subject matter of education, specific to healthcare education.

 

Providing Information about Food and Drinks

Pursuant to the General Remarks of the Nice Agreement, “services that provide advice, information or consultation are in principle classified in the same classes as the services that correspond to the subject matter of the advice, information or consultation....” TMEP §1401.02(a). Thus, an identification for services involving the provision of information about food or drinks requires specification of the service-related subject matter to ensure appropriate classification.

Identifications such as “information about food” or “information about drinks” are considered indefinite and inclusive of services in multiple classes because the service-related subject matter of the information is unclear. Although the Class 43 Class Heading includes “services for providing food and drinks,” the service of providing information about food and drinks does not necessarily relate to Class 43 services and could include a variety of food- or drink-related services, e.g., “providing nutritional information about food” in Class 44 or “providing information about wine-making” in Class 40.

 

Provision of Facilities

For classification purposes, recitations of services involving the provision of facilities should make clear whether the services involve (1) general purpose facilities, such as convention centers and exhibition halls, in Class 43 or (2) specialized facilities/facilities for a particular purpose, which are classified in any of the service classes, depending on the particular purpose specified. These facilities classification principles are based on the Nice Agreement.

General purpose facilities, such as convention centers and exhibition halls, may be used for a variety of business, educational, and cultural events, and each event has a fixed duration that is temporary in nature. Although general purpose facilities may be transformed by the temporary occupant into a space equipped for specific activities (such as a business conference or an art show), general purpose facilities typically have standard features (such as tables, chairs, and restrooms), rather than specialized features or equipment (such as artificial turf or exercise machines). Recitations of services involving the provision of general purpose facilities should use the wording "general purpose facilities" to make clear the nature of the services in Class 43.

Specialized facilities, or facilities for a particular purpose, are classified according to purpose. It is noted that applicants are not required to incorporate the word "specialized" into a provision of facilities identification to justify classifying the services according to their purpose. However, the identification must clearly indicate the special use or particular purpose of the facility to enable the Office to properly classify the service (e.g., providing tennis court facilities in Class 41, providing facilities for scientific research in the nature of wind tunnels in Class 42, providing physical rehabilitation facilitates in Class 44, etc.).

Research Services

As a general rule, research services in a scientific or technological field (such as bacteriology or computer software, respectively) are in Class 42. Additionally, research services directly related to tangible items, such as cosmetics, pharmaceuticals, or new products, are also classified in Class 42 because those research activities generally involve science-based testing and analysis of physical properties of the item(s). On the other hand, research services relating to an intangible subject matter are classified according to the intangible subject matter. For example, business research, research related to financial instruments, and legal research are classified in Classes 35, 36, and 45 respectively.

The distinction between research services in Class 42 and research services classified according to subject matter is based on whether the research activity involves science-based testing and analysis. Research services that involve science-based testing and analysis are classified in Class 42, and those that involve other types of non-scientific analysis, e.g., business analysis, financial analysis, legal analysis, etc., are classified according to the activities underlying the research service.
 

“Sales” and Retail/Wholesale Services

“Sales” cannot be listed as the primary activity in an identification of services, because the sale of one’s own goods or services is not a registrable service. TMEP §1402.11.  The identification should instead set forth the common commercial name of the activity, such as “retail clothing stores” or “computerized on-line ordering featuring general consumer merchandise.”

The wording “retail services” or “wholesale services” includes a wide array of services related to retailing and wholesaling, such as advertising or marketing services.  Accordingly, identifications for retail or wholesale services must set forth the nature of the retail or wholesale activity (e.g., on-line retail store services, wholesale distributorships, etc.).   Please note that adding wording such as “on-line” or “via the Internet” to the terms “retail services” or “wholesale services” would only serve to indicate the manner in which the retail or wholesale services are provided, but would not explain what the retail or wholesale services are.   The nature of the activity must be specified even if the retail or wholesale services are provided on-line. See generally TMEP §1402.11(a)(vi).

Identifications for retail or wholesale store services, distributorship services, ordering services, catalog service, and the like also require specification of the field or type of goods or services offered (e.g., electronic catalog services featuring car parts).  For guidance on identifications for retail or wholesale services that require specification of the field or type of goods or services offered, in addition to an indication of the nature of the retail or wholesale activity provided (e.g. on-line retail store services featuring {indicate field or type of goods}), please consult the ID Manual for relevant entries.
 

Technical Information and Consultation

As a general rule, "technical information" services are just like any other information services in that they are always classified by the service-related subject matter of the technical information provided (e.g., provision of technical information in the field of marketing in Class 35, provision of technical information in the field of building construction in Class 37, provision of technical information in the field of interior design in Class 42, etc.). Similarly, "technical consulting" services are just like any other consulting services in that they are always classified by the service-related subject matter of the technical consulting provided (e.g., technical consulting in the field of marketing in Class 35, technical consulting in the field of building construction in Class 37, technical consulting in the field of interior design in Class 42, etc.). On the other hand, "technology information" services and "technology consulting" services are always classified in Class 42 because the services involve the provision of information or consultation concerning computer technology and scientific technology, which are Class 42 subject matters.

ARCHIVED NOTICES

To access previous ID Manual Notices, please click here. Please note that information contained in past notices may reflect practice that is no longer accurate or applicable under current USPTO policy or under the 10th edition of the Nice Agreement.