This page contains information regarding ID Manual modifications. Click on the links below to view notices by date.
September 17, 1998
INSTALLATION, REPAIR, MAINTENANCE, ETC. OF SOFTWARE
The Identification of Goods and Services Manual (ID Manual) currently lists "Up-dating of computer software" and "Maintenance of computer software" in Class 42. By analogy, other similar activities that relate to computer software are also in Class 42. Examples of these other similar activities are installation of software and repair of software. These activities do not involve a physical repair or maintenance as contemplated by services in Class 37. Installation, repair and maintenance of software is accomplished by programming or reprogramming of the software itself and programming of software has always been a Class 42 activity.
GENERATION OF ELECTRICITY
The ID Manual currently lists "Production of energy" in Class 40. By analogy, other similar activities that relate to the production of energy are in Class 40. Examples of these other similar activities are generation and creation of various types of energy, such as electricity or steam. These activities are different from the services of distribution and transmission of energy, which are classified in 39.
The following is an abbreviated reiteration of memos concerning this topic that have been distributed in the past. Any activity consisting of a service that also happens to be provided by means of a global computer network is classified in the class where the underlying service is classified. For example, banking services are in Class 36 whether provided in a bank or on-line by means of a global computer network. Similarly, the service of providing information by means of a global computer network is classified in the class of the information subject. Entities who offer these services by computer are considered "content providers," that is they provide the information or substantive content for a web site andor home page. A recitation of services for these specific content providers should read "providing information in the field of . . . by means of a global computer network". The service would be classified by the class of the subject matter of the information. Services of content providers should NOT be preceded by language that indicates an access activity, e.g., "providing access to on-line information in the field of banking" or "providing multiple user access to a global computer network in the field of banking information."
Content providers are not access providers and the term "access" should be reserved for use by true access providers (see next paragraph) in order to avoid confusion as to the real activity being provided by an applicant. (For guidance in how to formulate recitations of services for providing information in fields that fall into a number of classes, see the third paragraph in the section entitled "Information, Advice and Consultation Services below.) The service of "providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information" covers those services provided by entities such as America OnLine®, Prodigy® and CompuServe®. They provide the computer service that enable computer users to access data bases and home pages of others. This is not to be confused with the fiber optic, modem or satellite connectivity that provides the technical telecommunications connectivity used by the access providers to perform their services.
The service of providing these telecommunications connections to a global computer network is classified in Class 38. It is ONLY the technical means by which one computer can communicate with another. The telecommunications provider does NOT provide the computer hardware that stores and processes the data; it provides the means by which data is transferred.
DISTRIBUTION OF VIDEOTAPES, ETC.
Identifications regarding production and distribution of motion pictures and television programs have been accepted in Class 41 for many years. This service involves the actual creation of the motion picture or television program and the accompanying activity of distributing it to movie theatres and television stations for display to the public. In this service, the ownership of the physical product does not leave the producer. The movie theatre or television stations 'lease' (in a sense) the film or tape for a period of time and then return it to the producer. This is not the case when distribution relates to videotapes, audio tapes or other hard goods that result from the production of visual or audio entertainment. When these goods are distributed, it is the same as the distribution of any other kind of hard goods by any other manufacturer.
The ownership of the physical product is transferred to the purchaser just as it is with clothing, toys, food products or computers. For this reason, distribution of videotapes, audio tapes, video disks, etc. should not be accepted as a service even when the distribution is linked to the production of these goods. The production of the entertainment product is perfectly acceptable in Class 41; however, the distribution of the hard goods that result from that production is not a service in that class. It is possible that such distribution could be considered a distributorship service in Class 35, but that must be determined on a case by case basis. It must be remembered that distribution of one's own goods exclusively is not considered a service; it is merely a necessary part of doing business. However, if the applicant distributes the videotapes, etc. of others as well as those it has produced, it may be considered to have the Class 35 distributorship service.
IDENTIFICATION AND CLASSIFICATION OF KITS
Generally, kits are identified and classified in two ways. If the kit is for the purpose of making a single object, it would be classified by the item it is intended to make (e.g., kits for making bird feeders would be classified in Class 21, even though the individual components would be classified in other classes.) If the applicant is willing to call its kit a "hobby craft kit" and indicates its purpose (e.g., hobby craft kit for making pot holders,) the item can be classified in Class 28 as a kind of toy or amusement product. If the kit is a combination of a number of items around a theme, (e.g., first aid kits, nail care kits, student "survival" kits,) the class that would include the majority of individual items in the kit would control the classification for the entire kit. Thus, a first aid kit that comprised primarily bandages for skin wounds, antiseptic and aspirin would be classified in Class 5 even though it also included tweezers (Cl. 8) and an instruction manual (Cl. 16.) In such a kit, the identification must indicate the type of kit and list the components with the items in the predominant class set forth as the first items in the list. If the components of the kit do not appear to have a predominant class (e.g., the kit contains two or three items in each of three classes), the applicant may elect which class or classes the kit should be in, but the identification must still list the goods that control the class first in the list of components of the kit. There are a few specific types of kits listed in the ID Manual however; these items are usually classified on a case by case basis.
INFORMATION, ADVICE AND CONSULTATION SERVICES
Consultation services are generally classified in Class 42 regardless of the field in which the consulting activity is provided. The only exceptions to this are professional business consultation or business management consultation services in Class 35, financial consultations in Class 36 and insurance consultations in Class 36. Unless the consulting services fall into one of these narrow Class 35 or 36 exceptions, they are classified in Class 42. However, if an applicant provides information or advice in a particular field, that service may be classified in the class of service that underlies the information or advice. Information or advice activities usually provide a lesser degree of sophistication in the nature of the service rendered than do consultation services. Thus, while construction consultation services would be classified in Class 42, construction advice or information services would be classified in Class 37 with other construction services.
When a mark is used to identify information services that provide information in a wide variety of fields that fall into various classes, an identification and classification scheme similar to the one described above concerning "kits" (see section above "Identification and Classification of Kits") should be used. The recitation should indicate the significant fields in which information is provided. The dominant class of those fields should be ascertained, those fields should be collected in the beginning of the recitation and the recitation should be classified in that dominant class. The other fields may be at the end of the recitation. For example, providing information in the fields of hotels, restaurants and entertainment events should be classified in Class 42 since two of the three areas of information (hotels and restaurants) are classified in Class 42.
However, if there is no dominant class, the applicant may elect which class or classes the service should be in, but the recitation must still list the services that control the class first in the list of fields of information. For example, providing information in the fields of hotels, travel and entertainment could be in Classes 39, 41 or 42 depending on which of the subject matter fields was listed first in the recitation. This scheme should be followed for web sites that provide a wide range of information as well. This modification of existing policy is necessary since there will no longer be a miscellaneous class of services in the 2001 revision of the Nice Agreement and the alphabetical list accompanying the Agreement. Thus, recitations such as "providing information in a wide variety of fields" can no longer be accepted. It will no long be able to classify such a service as a "miscellaneous service" since there will no longer be a "catch-all" service class in the Nice Agreement.
IDENTIFICATION OF "BONUS PROGRAMS"
Many businesses offer "bonus programs" or "frequent patron programs" to encourage patronage of that business. However, promotion of one's own goods or services is not considered a service under the Lanham Act since the beneficiary of such an activity is the business itself and not a third party. However, these special programs do confer some benefit to the customers who participate in the program but this benefit flows directly from use of the trademark owner's goods or services. (The situation usually arises in the case of services so the examples given here will focus on service recitations.) Thus, a frequent flyer program provided by an airline to encourage use of its own air transportation services would be identified as "air transportation services featuring a frequent flyer bonus program" and it would be classified in Class 39.
Similarly, a retail store that has a program through which patrons earn points that result in discounts on future purchases at that store would be identified as "retail store services in the field of [indicate field] featuring a frequent patron program in which points are accumulated to be used for discounts on future purchases". This service would be in Class 35 because it is primarily a retail store service. It should be noted that organizing and conducting a program of this type for a third party is a classic promotionadvertising service and would be classified in Class 35 with language such as "promoting the goods and services of others by means of a point accumulation program with points used for discounts on future purchases of those goods and services" (or whatever the details of the program may be.)
When assessing whether an identification of goods or services is acceptable, the following concepts should be considered:
1.Clarity: Would a non-expert in the field of trademarks or in the field of the applicant's goods or services understand what the item or the activity is?
2. Classification: Is there language in the ID that makes classification difficult or ambiguous; are the goods or services clearly in a single class?
3. Scope: Is the scope of protection that would be provided by a registration clear, that is, does the language of the ID adequately define the parameters of the goods or services in the application? If an ID satisfactorily accomplishes these needs for clarity, classification and scope, it should be accepted even if the language proposed by the applicant doesn't appear in the ID Manual.
MODIFICATION OF REPUBLICATION GUIDELINE
The existing republication guideline has indicated that a change of class in an application that has been published, whether it concerns a single or multiple class situation, always requires republication of the mark for opposition. However, in three limited areas this guideline will be changed.
1.Classes 29 and 30 - movement of goods between classes 29 and 30 or the addition of 29 to an application that originally had Class 30 and vice versa does not require republication.
2.Retail activities - the movement of a retail activity (retail store, distributorship, electronic retailing, etc.) from Class 42 to Class 35 due to the change in the class heading for Class 35 in the Nice Agreement does not require republication.
3.Computer game programs - the movement of computer game programs from Class 28 to Class 9 due to the change in the Alphabetical List of the seventh edition of the WIPO Classification Manual does not require republication.
ID MANUAL EFFECTIVE DATES
The effective date field in the FolioViews ID Manual indicates the date of the status of the particular entry. If an Office action is taken on or before that date and the action is inconsistent with the new or modified entry, the applicant should be given the choice to either keep the existing ID andor class or to amend to the new ID andor class. If an Office action is taken after the status date, any ID or class requirement must comply with the new or modified entry.
This note supersedes all previous guidance on the identification and classification issues raised in the memo.
February 20, 1996
CLASSIFICATION OF COMPUTER SERVICES
AND ASSOCIATED POLICY
Class 9: Pre-recorded software in hard form (CD-ROMs, diskettes, magnetic tapes, etc.) are in this class with an indication of the subject matter or function of the software. The subject or function must be detailed and specific. Very broad statements of function such as "computer programs for business use" are not acceptable. Of course, computer hardware is in this class.
However, software that is down-loadable from a computer network is considered a service since there are no hard goods received from the supplier. The service is providing the software on a global computer network. Subject matter or function of the software must be indicated, but the service of providing it is in Class 42. An acceptable ID in this area would be "providing computer software [indicate specific subject or function] that may be downloaded from a global computer network." The same of specificity of subject matter or function is required in this situation as is required for the hard goods in Class 9.
Class 16: As with software in Class 9, only hard copy is considered Class 16 goods. Magazines or books that are downloadable from a computer network are not hard goods and are not classified in Class 16. Publications that are down-loadable or viewable by means of a computer network is considered a service since there are no hard goods received from the supplier. The service is providing the publications on a global computer network. Subject matter of the publications must be indicated, but the service of providing it is in Class 42. (See Class 42 discussion below.) This topic is also discussed in the Examination Note of June 19, 1995 which may be found in the Notices section of the FolioViews ID Manual on PTONET.
Classes 35, 36, 37, 39, 40 & 41: Any activity consisting of a service that ordinarily falls in these classes (e.g. computer games, various financial transactions), and that happens to be provided by means of a global computer network, is classified in the class where the underlying service is classified. For example, banking services are in Class 36 whether provided in a bank or on-line by means of a global computer network. Similarly, the service of providing information by means of a global computer network is classified in the class of the information subject. Entities who offer these services by computer are considered 'content providers', that is, they provide the informational or substantive content of a web site andor home page. If an entity provides information in a wide variety of fields, this must be reflected in the identification and the service may be classified in Class 42 (e.g., providing information in a wide variety of fields by means of a global computer information network.)
These rules also apply to activities in Classes 38 and 42, however, the comments below also apply to Classes 38 & 42.
Class 38: Provision of telecommunications connections to a global computer network. These services are purely telecommunications connections such as those provided by AT&T, MCI or other telecommunications providers. It is ONLY the technical means by which one computer can communicate with another. It is NOT providing the computer technology that transfers the data; it is the means by which that data is transferred. This service connects the user to the 'link provider' (see Class 42 discussion below) or the web site itself.
Class 42: Providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information.
Leasing or providing access time to computer data basesweb siteshome pages of others in the field(s) of [indicate specific field(s) or subject matter ] by means of a global computer network.
This language covers those services provided by entities such as America OnLine, Prodigy and CompuServe. They provide the computer connection (often using the telecommunications services of other entities as described above in Class 38) that enable a computer user to access the data bases and home pages of others. These
entities are considered 'link providers' in that they provide the computer connection needed for a computer user to access a content provider. The word "access" should be limited to these services and should not be used in describing the service of a content provider.
A single entity may provide one or a number of the services described above. However, each service must be properly identified and classified even though they may be provided by a one applicant.
If an entire magazine or other publication is presented at a web site, the computer service of providing that publication electronically is considered the primary service involved in this activity. The service being provided is the making available of magazines, books and other publication via computer in that it makes the receipt of these publications convenient and flexible for computer users. Appropriate language for these services would be "computer services, namely, providing on-line [indicate specific nature of publication] in the field of [indicate subject matter of publication]" in Class 42. As with Class 16 publications, the subject matter of the publication does not effect the classification of this service.
There are distinct and significant differences among the services offered by the telecommunications connection providers, the "link" providers and the "content" providers. The identification of the services should accurately reflect activity offered by the applicant. Unfortunately, this accuracy depends in large part on the manner in which the service activity is expressed, so great care should be taken that language that describes a "link" provider activity should not be used to describe the services of a "content" provider.
The term "Internet" is still the subject of a proceeding at the Trademark Trial and Appeal Board. Therefor, this term should not be used in identifying any goods or services connected with this global computer information network. Language such as "global computer information network" or a substantive equivalent should be used instead of the term "Internet."
The same is true of the phrase "World Wide Web", although the controversy has not ripened into a TTAB proceeding. There are conflicting applications involving the phrase, therefor, it should be avoided in identifications of goods or services. Phrases such as "web sites," "web pages," "home pages," or "global computer information network sites" may be used instead of "World Wide Web."
The term "multimedia" merely describes how an activity or goods are presented in their electronic form. It is not specific in itself to identify goods or services. Thus "software in the field of multimedia" is unacceptable in Class 9 to describe recorded software and "multimedia information services provided by means of a global computer network" is too vague to identify a service activity.
June 19, 1995
As a result of the telecommunications seminar that was held in November of 1994, the following modifications and explanations of telecommunications identifications should be noted.
Telecommunications services; namely,
This lead-in was re-inserted into the ID Manual in the January 1, 1995, update with the instruction that it must always be followed with a more specific activity, such as "telecommunications services; namely, telephone communications services" or "telecommunications services; namely, cellular telephone services."
"Namely" portion of the ID
The specific activity that follows a general lead-in in this field should focus on the functionality and overall purpose of the service and not necessarily on the means of transmission. The means of transmission can be helpful and may be needed to clarify the nature of the function of the service. However, there are very few, if any, situations in which indicating the means of transmission only would be considered adequately specific as a recitation of telecommunication services in its entirety. On the other hand, the function of the service should be made the most significant element of the recitation. For example, "telecommunications services; namely, electronic paging" would be acceptable whereas "telecommunications services; namely, wireless transmissions" would be considered indefinite.
Recognition of industry terms
Industry terminology should be recognized as sufficient descriptors in the identification of services when supported by two or three references in various telecommunications dictionaries or other similar source books. Examples of acceptable terminology are "telecommunications services; namely, personal communications services" and "telecommunications services; namely, ISDN services." If there is any question, a brief explanation of the activity may be included in the ID, but the accepted industry terminology should remain part of the ID as well.
Generally, overly-broad recitations of services should be avoided unless the applicant can demonstrate by specimens and other supporting material that, in fact, a broad range of telecommunications services is being offered under the particular mark presented for registration. Merely putting an adjective before the phrase "telecommunication services" (e.g., wireless telecommunication services) usually does not remedy the over- breadth problem of the term "telecommunication services."
"Link" providers v. "Content" providers -- the "mail carrier" or the "letter writer"
Applicants who merely transport their services over telecommunications facilities (e.g., "providing interactive voice response consumer lending services for credit unions") should not be considered as rendering a service in Class 38. The Explanatory Note for Class 38 in the Nice Agreement is helpful in distinguishing telecommunication service providers from providers of services in other classes by means of telecommunications facilities. That Note reads "[t]his class includes mainly services allowing at least one person to communicate with another by a sensory means." (The term 'person' is read very broadly and includes computer-to-computer communication.)
A service in Class 38 provides the technical link by which 'persons' can communicate. As indicated above, services in which the emphasis is on the "content" of the value- added service that are incidentally provided by means of this telecommunication link are in the classes they would be in were they not provided by electronic means. Avoiding this "link" versus "content" confusion is becoming more important than ever in since more and more services are provided by means of telephone andor computer links. Generally, these services provide information and, like other information services, should be classified in the class of the information provided. Appropriate language as follows may be suggested: "financial information services rendered by computer by means of a global computer network" (Class 36). Variations on the language are acceptable; however, the ID must first indicate the field of information provided since this will control classification and then the applicant may indicate the electronic or telecommunication means by which the information is transmitted. If the applicant provides information in a wide variety of fields, the ID may so indicate and the service would be classified in Class 42.
Some examples of services that should be treated in this way are on-line magazine services, electronic bulletin board services and other such services that provide substantive content by means of a global computer network. It should be remembered that NONE of these "content providers" offer services such as electronic mail services. They may receive and send out electronic mail, but they are not the technical "link providers" for an electronic mail service. By analogy electronic mail for these "content providers" is not considered a service under the Lanham Act any more than the receipt or sending of one's own paper correspondence has ever been considered a service.
INSTALLATIONMAINTENANCE OF COMPUTER SOFTWARE
This language was proposed as an identification of services in the course of the computer seminar that was held in February of 1992. However, it was rejected by the computer working group that reviewed the proposals that arose from that seminar. There seems to be a valid service being rendered; however, it is a form of computer programming and is not a service in Class 37 as the use of the language "installation and maintenance" would lead one to believe. The service intended by that language would be in Class 42. Therefore, whenever possible, the terms "installation" and "maintence" should be avoided so as not to cause confusion with Class 37 services. Terms such as "loading of computer software for others" or "up-dating of computer software" would be acceptable terminology for these services.
If an applicant insists on use of the "installationmaintenance" terminology because it is recognized in the trade, then the identification should begin with "computer services, namely...," "computer programming services, namely..." or "computer program up- dating services, namely...." All of these introductions followed by "installation and maintenance of computer software" would be acceptable in Class 42.
Publications are appearing on computers through services such as America Online, CompuServe and Prodigy as well as through sites on publicly accessible computer networks. These publications cannot be considered goods in Class 9 or Class 16 since they are not in tangible form when delivered to the end user from the provider. Therefore, this activity must be considered a service. The service being provided is the making available of magazines, books and other publication via computer in that it makes the receipt of these publications convenient and flexible for computer users. Appropriate language for these services would be "computer services, namely, providing on-line [indicate specific nature of publication] in the field of [indicate subject matter of publication]" in Class 42. Thus, a mark such as GQ.COM for GQ magazine made available via computer would be identified as "computer services, namely, providing on-line magazines in the field of fashion, entertainment, health, lifestyle and other topics of general interest."
Note that the provider of the on-line publication could also be providing the computer access to the publications. However, as indicated above in the telecommunication section, provision of computer access and provision of the material being accessed are two different and separable services that should not be confused.
If the applicant is a publishing house and presents various on-line publications via computer under a mark separate from the names of the publications themselves, its service can be acknowledged as "on-line electronic publication of [indicate type of publication, e.g., books, magazines, etc.]" in Class 41.
Once again, remember that "sales" themselves are not services. Only the seller benefits from sales. Third parties benefit from the services that accompany sales, such as the bringing together of goods in one location for pucharsers to view and select, the creation of an attractive and convenient atmosphere in which to shop, etc. This term is still appearing in identifications of services as the primary activity in the identification. It should be avoided since it is an activity that cannot be recognized as a service under the Lanham Act or the International (Nice) Agreement.
For an entertainment service such as those rendered by a musical group, the performance must be live. The recording of a live concert or studio performance is not considered a service of the performing group. Similarly, performances for the purpose of recording only are not considered services. There is no service as recognized by the Lanham Act being rendered when a performing group records its own performance or performs only for the purpose of recording. The production by another entity of a performance by a musical group for recordation would be a service, but an identification such as "live and recorded performances by a musical group" could not be accepted as a valid service identification unless the words "and recorded" were deleted.
Recorded entertainment usually takes the form of goods in Class 9, such as video tapes, audio cassettes, CD-ROM's, etc. This is consistent with the treatment of "distribution" of these products as goods and not services as discussed above in the Distribution of video tapes, etc. section.
Services that involve the issuance of awards are usually classified in Classes 35 and 41. The difference depends upon the purpose of the award program. If the award program is to promote employee incentive by rewarding excellence in job-related performance that actually furthers the business of the participants (e.g. safety, quality, productivity, customer service), then the service should be classified in Class 35. If the award program is to recognize excellence or achievement that may or may not be related to the participants' business or professional endeavors (e.g. achievements in community service, excellence in country music performance), then the service should be classified in Class 41. The distinction to keep in mind is that Class 35 award programs do further the business interests of the recipients or the award-giver itself by encouraging positive business-related performance, while Class 41 award programs reward excellence for endeavors that do not further the business interests of the award-giver.
DISTRIBUTION OF VIDEO TAPES, ETC.
Identifications regarding production and distribution of motion pictures and television programs have been accepted in Class 41 for many years. This service involves the actual creation of the motion picture or television program and the accompanying activity of distributing it to movie theatres and television stations for display to the public. In this service, the ownership of the physical product does not leave the producer. The movie theatre or television station 'lease' (in a sense) the film or tape for a period of time and then return it to the producer.
This is not the case when distribution relates to video tapes, audio tapes or other hard goods that result from the production of visual or audio entertainment. When these goods are distributed, it is the same as the distribution of any other kind of hard goods by any other manufacturer. The ownership of the physical product is transferred to the purchaser just as it is with clothing, toys, food products or computers. For this reason, distribution of video tapes, audio tapes, video disks, etc., should not be accepted as a service even when the distribution is linked to the production of these goods. The production of the entertainment product is perfectly acceptable in Class 41; however, the distribution of the hard goods that result from that production is not a service in that class.
It is possible that such distribution could be considered a distributorship service in Class 42, but that must be determined on a case by case basis. It must be remembered that distribution of one's own goods exclusively is not considered a service; it is merely a necessary part of doing business. However, if the applicant distributes the video tapes, etc. of others as well as those it has produced, it may be considered to have the Class 42 distributorship service.
There is some confusion as to when certain pieces of apparatus are classified in Class 9 and when they are classified in Class 10. Class 9 goods include those that are used for scientific research or industrial purposes, while Class 10 goods are those that are used for medical treatment or diagnostic purposes. This distinction may mean that the same goods could be classified in either class depending upon their use. However, even if the goods perform the same function, they are often different in nature depending on whether they are for industrial or research use, or for medical treatment or diagnostic use. For example, a thermometer for medical use is in Class 10. Thermometers other than for medical use are in Class 9. Both items measure temperature; however, they are usually very different in nature.
There are, however, goods that are in Class 10 when they are for medical use and in Class 9 (or another class, such as Class 7 or Class 11) when they are not for medical use. An item should be specified as being for medical use if it could be in a class other than Class 10 when not for medical use. For example, lasers for medical use are in Class 10; lasers not for medical use are in Class 9. When an item is specified for use by invalids or handicapped individuals, it should be classified in Class 10 as well. Thus, toilets adapted for handicapped persons are in Class 10, while toilets (without any further specification) are in Class 11.
Finally, an item that is normally not classified in Class 10 (see the Class 11 example above), does not need to be specified that it is not for medical use when it is classified in its normal class. When that item is used for medical purposes, the medical use must be specified in order to justify its classification in Class 10. If it is possible for an item to be commonly used for medical or non-medical purposes, its purpose must be specified in the identification and the goods classified appropriately (see the example regarding lasers above).
UNUSUAL SPECIALIZATION OF GOODS
It should be noted that the need to further specify an otherwise acceptable identification of goods when the particular use of the goods is not its commonly understood use applies in situations other than Class 10 as discussed above. An entry in the ID manual is presumed to include only those types of goods or services within the ordinary meaning of the wording and for the ordinary trade channels. Specialized types or specialized trade channels outside the ordinary meaning are not included. If the ID in the application is from the ID manual but it appears that the applicant's goods or services are a specialized type or are used only in a specialized trade channel outside the ordinary meaning of the wording, greater specificity is required. The specialized use may change the classification as well. Without the specification suggested above, the alternate classification would not appear justified.
Class 13 includes explosive weapons and their ammunitions (as well as explosives in general and fireworks). Weapons that are not powered by detonation or explosion should not be classified in Class 13. They should be classified as is appropriate for the actual defense mechanism employed by the weapon.
For example, although it has been done extensively in the past, personal defense sprays should not be classified in Class 13. They are purchased for the synthetic or natural chemical extract that is contained in the aerosol dispenser; therefore, they should be classified in Class 1 based on the chemical nature of the product. A weapon that employs blades that are not shot or explosively projected should be classified in Class 8. Recently the item "self-defense weapon, namely a glove equipped with blades" was published in Class 13. The proper class for this type of weapon would be Class 8 along with knives and swords.
This memo supersedes all previous guidance on the identification and classification issues raised in the memo. Please retain this memo for reference.
June 7, 1995
* The Folio VIEWS 3.1a version of the ID MANUAL has been developed for review.
* The N Column has been deleted.
* The US Column has been deleted.
October 11, 1994
USE OF THE ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES MANUAL (ID MANUAL)
Flexibility and Adaptability of Manual Entries
The ID Manual is a listing of phraseology that can be accepted in an application without further question. However, it is not an exhaustive list of acceptable ID's and the majority of entries can be adapted and reworked according to the needs of an applicant. If an application contains terminology that is not in the ID Manual but does follow the intent of an analogous entry, the ID may be considered acceptable. There are certain indications in the acceptable ID language that control the classification of the entry; such as material composition, "fitted" or "unfitted," "sold empty." These specifications must remain in the ID in some form in order to clarify the assigned classification. When the use or purpose of an item is indicated as part of the actual wording of the ID, it must be included as written in the Manual, e.g., X-ray apparatus for medical use in Class 10, since the required wording controls the classification of the goods. However, when the requirement for use or purpose is suggested in brackets, the indication is not required for classification purposes. It is a clarification and is usually needed for determining likelihood of confusion, e.g., booklets [indicate subject matter]. Booklets are classified in Class 16 regardless of subject matter, yet an indication of subject matter must be provided for 2(d) purposes. (See further discussion of this requirement under the PUBLICATIONS section, below.) The content of the specification must be appropriate to the goods, but it does not have to follow any prescribed terminology.
Services generally follow the same guidelines. The majority of entries in the services section can also be reworked as the specific situation may require. However, there are some entries in the services area that must be set forth precisely as indicated in the ID Manual because they are recognized terms of art. (Some of these are set forth below in the SECONDARY SERVICES section of this Note.) They are few in number so the majority of the entries in the services section can also be reworked as the specific situation may require.
Parentheses ( )
Material in parentheses ( ) is part of the language of the accepted ID. When the language appears in parentheses it is simply indicating that the parenthetical language precedes the key word and any other terminology that may follow it. Thus, the entry "Pans (Frying)" is acceptable in an application as "Frying pans"; both words must be part of the final identification. The following are some examples of entries with language in parentheses. Examples of acceptable identifications are listed after the equal sign that follows the Manual entry.
Garments (Textile linings for) = Textile linings for garments
Socket sets (Hand tools, namely) = Hand tools, namely socket sets
Identification cards (Preparation of) = Preparation of identification cards
Brackets [ ]
There are two kinds of language included in brackets [ ]. The first is a requirement that must be included in the final identification; the second is a clarification of the type of goods covered by the entry but does not require inclusion of the specification.
The first type of language requires the indication of a specification. This means that the specification must be included in the final language of the ID. There are simply too many possibilities to list them all in the Manual and it is unnecessary to do so; however, the applicant must supply the proper specification. These instructions will include some form of the words "indicate," "specify" or both. For example, the entry "Racks for vehicles [INDICATE type of rack, e.g., bicycle, ski, luggage]" requires an indication of the particular type of rack in the ID itself. In the next update of the Manual on PTONET, these instructional words will be indicated in capital letters. The following are some examples of entries with language in brackets that requires some specification to be made to the final identification of goods or services in order for it to be acceptable. Examples of acceptable identifications are listed after the equal sign that follows the Manual entry.
Receivers [INDICATE type, e.g., telephone, audio, video] = Telephone receivers, audio receivers, video receivers, satellite receivers, radio receivers, etc.
Video tapes featuring [INDICATE subject matter] (Prerecorded) = Prerecorded video tapes featuring entertainment, prerecorded video tapes featuring training in physical fitness, etc.
Teaching in the field of [INDICATE SPECIFIC field, e.g., music, remedial reading]= Teaching in the field of music, teaching in the field of remedial reading, teaching in the field of word processing, teaching in the field of business management, etc.
Entertainment in the nature of [INDICATE SPECIFIC sport] games = Entertainment in the nature of basketball games, entertainment in the nature of baseball games, entertainment in the nature of hockey games, etc.
The second type of language in brackets does not require a specification. It is instructional or informational in nature and does not need to be part of the ID unless the applicant wishes to include it or the Examining Attorney decides that the information would be helpful for likelihood of confusion purposes. An example of this is "Mangles [commercial ironing machines]." The following are some examples of entries with language in brackets that explains the Manual entry but does not have to be included in the final identification of goods or services in order for it to be acceptable. Examples of acceptable identifications are listed after the equal sign that follows the Manual entry.
Vegetable oils [for cooking] = Vegetable oils
Incense burners [domestic] = Incense burners
Jerseys [clothing] = Jerseys
Garbage collection [trash pick up only] = Garbage collection
Literary agencies [management] = Literary agencies
Finally, there are some entries that blend the two types of bracket language. These entries indicate that the language in the Manual is acceptable without further specification but, more detailed information would be acceptable as well. An example of this is "Instruments [in general, or indicate specific instrument] (Musical)." The following are some examples of entries with language in brackets that leaves the inclusion of further specification to the discretion of the Examining Attorney and the preference of the applicant. Examples of acceptable identifications are listed after the equal sign that follows the Manual entry. (Note that the "indicate" and "specify" terminology is not capitalized in these entries since the specification is not a requirement for an acceptable ID.)
Juices [in general, or name specific type, e.g., apple, grape] (Fruit) = Fruit juices, apple juice, grape juice, pineapple juice, orange juice, etc.
Keyboard instruments [in general, or indicate specific instruments] = Keyboard instruments, pianos, organs, spinets, etc.
Rental of telecommunication equipment [in general or indicate specific items of equipment, e.g., telephones, facsimile machines] = Rental of telecommunication equipment, rental of telephones, rental of facsimile machines, rental of cellular telephones, etc.
The most important thing to remember is that, while the ID Manual contains identifications of goods and services that can be accepted without question when presented in an application as written in the ID Manual, other identifications are acceptable. Common sense should indicate when language that does not appear in the ID Manual is acceptable. If there is any doubt, Senior Attorneys, Managing Attorneys or the Administrator for Classification and Practice should be consulted. Suggestions for new entries in the ID Manual are always welcome and should be directed to the Administrator for Classification and Practice.
Recitations of services should include activities that are classified in one class only. There have been exceptions made to this rule where activities that commonly involve services that are secondary to the principal activity have been included in the recitation even though those secondary services fall into a class other than the one designated for the principal activity.
Acceptable recitations of this type can be found in the ID Manual. These recitations have been worked out following extensive discussion and represent an understanding as to "terms of art" referring to particular sets of services. Some examples of these are video store services, truck stop services, shopping center services and automobile club services. Unlike most of the wording used in the ID Manual that can be modified to fit the needs of a particular applicant so long as the intent of the entry is satisfied, these "terms of art" must be set forth as presented in the Manual. For example, "video stores" or "video store services" is an acceptable recitation in Class 42 and includes, by implication, the rental of video tapes that would normally be classified in Class 41 because this activity is often, and typically, part of a video store. However, "retail video store services" would only cover the service in which video tapes are brought together in a commercial establishment for the convenience of potential purchasers since that is the activity recognized by the phrase "retail store services." It would not, by implication or otherwise, include the rental of video tapes.
The recitations that are presently included in the ID Manual that bundle services should be the only ones that are accepted without further discussion or consultation. Acceptability of additional recitations of this type must be cleared through the Administrator for Classification and Practice. Such recitations will only be sanctioned if a compelling argument for acceptance can be presented.
When there is a change of class in an application that has been published, whether it concerns a single or multiple class situation, the mark must always be republished for opposition. This policy change does away with the few exceptions to the requirement to republish applications in which there had been a class change, namely, changes between Classes 29 and 30 and changes in multiple class applications in which the class to which the goods or services were being reclassified was already included in the application.
This change was precipitated by the practice of commercial search services who, at their clients' request, search for marks in particular classes as used in connection with particular goods or services. Since a review of all goods or services in an Official Gazette would not always be made, movement of goods and services between classes becomes critical and reclassifications must be published to be sure that proper notice is made in all situations.
Specificity of Program Function
The current edition of the TMEP [see Section 804.03(b)] and the March 15, 1993, revision of the ID Manual imply that formerly acceptable terminology for identifying computer programs may no longer be used by applicants. This is not necessarily the case. The purpose of the revision of the TMEP and the ID Manual was to make clear the degree of specificity required in describing a computer program and not to prohibit the use of any particular terminology in identifying the nature of the computer program. Due to the proliferation of computer programs over recent years and the degree of specialization that these programs have, broad specifications such as "computer programs in the field of medicine" or "computer programs in the field of education" should no longer be accepted unless the particular function of the program in that field is indicated. Thus, "computer programs for use in cancer diagnosis" or "computer programs for use in teaching children to read" would be acceptable.
The TMEP states that merely identifying the intended users or field or industry in which the program is used is not acceptable. Typically, only indicating the user, field or industry will not be adequate to satisfactorily identify the nature of a computer program. However, this should not be taken to mean that user, field or industry indications can never be accepted, especially if this type of detail adequately specifies the nature of the computer program. For example, "computer programs in the field of geographical information systems" would be acceptable. Geographical information systems, also known in the industry as GIS, are well-defined computer applications that do not need further definition. If it is unclear from the application whether or not the identification offered by an applicant adequately specifies the nature of its computer program, further information may be requested. If that information supports the clarity of the offered identification, further modification should not be required. Any questions concerning the recognition of a term of art for a computer program should be discussed with the Senior Attorneys or other Examining Attorneys who are knowledgeable in the computer field.
Another aspect of the identification of computer programs is the indication that manuals are sold with the programs. Manuals have been included in computer program identifications in Class 9 for many years because they are typically sold packaged with the programs they relate to. They cannot be removed from the packaging and purchased separately, therefore, we have allowed applicants for such goods to state "computer programs...and manuals sold as a unit" or "sold therewith." However, this type of "inclusory" language is the only language permitted in this situation. An applicant wishing to state "computer programs...and manuals therefor" must change the language relating to the manuals to clearly indicate that the manuals are sold with the programs. The phrase "and manuals therefor" could easily refer to manuals sold in another section of the store or in an entirely different commercial establishment from the programs themselves. Manuals sold in this manner must be classified separately in Class 16.
There have been a number of applications (and some registrations) for these malt coolers. They have a very low alcohol content and applicants do not want to say (or cannot say due to regulations from other government agencies) that they are "beer-based." The presence of beer and beer-type beverages (ale, stout, porter, malt liquor, etc.) in Class 32 is an anomaly in this class that covers non-alcoholic beverages (that are not classified in Classes 29 or 30). The amount of alcohol in a beverage does not control whether it is classified in Class 32 or 33. Only beers are in Class 32. All other alcoholic beverages, regardless of alcohol content, are in 33. Thus, an alcoholic malt cooler should be classified in Class 33. If it is a non-alcoholic malt cooler or a beer-based cooler, it may be in 32, but the goods should be accurately identified as supported by the specimens.
These activities have become quite widespread as concern for the environment increases. However, the phrase "environmental remediation services" is too broad to be accepted because there are many services that could fall into different classes that can be covered by this same general language. The particular service intended by that terminology should be set forth in the application and classified appropriately, e.g., oil spill clean up services (Class 37); waste management services (Class 42) or decontamination of nuclear waste (Class 40). If possible, use of the term "environmental remediation services" should be avoided even if the applicant goes on the specify the particular aspect of environmental remediation it performs. Because it is extremely confusing when the same "lead-in" language (environmental remediation services, namely...) is used in a number of different classes, use of the term "environmental remediation services" should be avoided altogether, if possible. Instead, the applicant should merely specify the particular environmental remediation service it performs.
A number of years ago a policy existed in the area of publications that allowed an applicant to identify its goods as "magazines," "brochures" or "booklets" without specifying the subject matter if the mark itself (usually the title of the publication) clearly referred to the subject matter. However, decisions by the Trademark Trial and Appeal Board highlight how this practice may present difficulties in determining likelihood of confusion and descriptiveness. The TTAB must determine likelihood of confusion on the basis of the goods set forth in applications and registrations. The Board cannot base its conclusion on any other evidence and that would include the title of the work where a publication is involved. See, generally, Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 1 USPQ2d 1813 (Fed. Cir. 1987); Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989); and In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). Therefore, the subject matter of publications should be indicated in all applications, even those in which the title of the work clearly indicates the subject involved.
The prohibition against the use of the term "sales" in a retail store (or similar activity) recitation is not new. "Sales" is not acceptable because it is not considered a service that is rendered for the benefit of others. The only beneficiary of the actual sale is the proprietor of the store or owner of the goods since, presumably, the owner or proprietor makes a profit from that commercial transaction.
The Nice Agreement prohibits the recognition of "sales" as a service in the Explanatory Notes for Class 35 only. However, the intent of the prohibition is to establish the position that "sales" is not a service recognizable in any class. It is only included in Class 35 because, if it were mistakenly to be recognized as a service, it would probably be classified in Class 35.
The activities of a retail establishment that do provide a benefit to others are those that surround the sale. As recently recognized by WIPO, the most significant of those activities is "the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling consumers to conveniently view and purchase those goods." The phrase "retail store services" is intended to cover that "bringing together and making available" activity using commonly recognized terminology rather than the more cumbersome language recognized by WIPO.
Unfortunately, registrations do exist for "retail sales" and similar activities focusing on "sales" terminology. However, the "retail store" registrations far out-number the "retail sales" registrations. The "sales" registrations are the aberration, not the rule and the practice of using that term instead of "store" should not be continued.
Furthermore, if the United States joins the Madrid Protocol, U.S. applications will be rejected at WIPO if they contain the term "sale" in reference to the primary activity of the applicant. Similarly, if the United States joins the Trademark Law Treaty, U.S. applicants will have problems filing in foreign countries under the provisions of that treaty if the term "sale" or its variations are included in their foreign applications. Since there cannot be one standard for applicants who will apply in other countries through the Madrid mechanism or who will file applications in countries that are signatories to the Trademark Law Treaty and another standard for those who will not, a standard must be adopted that complies with U.S. law (services are those activities that are rendered for the benefit of others) as well as international requirements.
The term "sale" and variations on the term may be used in recitations of services in which the primary activity of the applicant does not involve actual sales. For example, "training courses in the field of sales and merchandising" or "business consultation in the field of sales promotion" are perfectly acceptable recitations for services that are recognizable under the Lanham Act.
This memo supersedes all previous guidance on the identification and classification issues raised in the memo. Please retain this memo for reference.