Effect of changes in practice based on the restructuring of Class 42 in the 8th Edition (2002) of the Nice Agreement

CONTENT

1. Elimination of "miscellaneous class designation"
2. Information services
3. Association services and "promoting the interest of" services
4. Charitable services, other than monetary
5. Consulting services
6. Implementation of the changes


1. Elimination of "miscellaneous class designation"

Perhaps the greatest impact of these new classes is the elimination of a class for "services that cannot be classified elsewhere." In the United States, we have used this phrase in the class heading of Class 42 to allow acceptance of many imprecise identification of services as well as the incorrect classification of a service because it was difficult or complicated to figure out the class that was really appropriate for that activity. However, these imprecisions and errors cannot continue under the new class headings. Services must be identified with sufficient clarity and precision to allow for appropriate classification in one of the eleven service classes. Most of the changes in practice due to the new service classes flow from the elimination of the miscellaneous class designation that is now in Class 42.

2. Information services

The United States has accepted "providing information in a wide variety of fields" as an identification of services, particularly in the context of Internet web sites. The only caveat to the Examining Attorneys was to make sure that, in fact, the web site or information services DID provide information in a wide variety of fields. If the information was only provided in two or three classes, the applicant was not entitled to the broad scope of protection that would come with "a wide variety of fields" language. Recently, Examining Attorneys have been encouraged to have applicants specify the fields of information provided and classify those fields in their appropriate service classes. At the very least, the fields of information should be grouped with the predominant or most important field listed in the ID first with the service classified in the class of that predominant class and the applicant could keep its application in a single class. However, so long as the language "services that cannot be classified in other classes" existed in Class 42, the Examining Attorneys were without much support in their requirement that the applicant indicate the particular fields in which it was providing information. That will have to change on January 1st.

When the "miscellaneous" phrase is eliminated from Class 42, the Examining Attorney will have to require that the applicant indicate the fields in which it is providing information in order for the service to be accurately classified. The fields may be listed somewhat broadly, but they must be specific enough to allow classification. The Office has decided that "bundling" of the fields of information or, as described above, listing all fields of information but allowing the dominant or most significant field to control the classification with the other fields that are simply "along for the ride" will no longer be acceptable. This determination is based on the need for proper classification to insure accurate searching both inside and outside the USPTO and to give the applicant the protection it expects under the Lanham Act. An applicant is not required to register in all classes in which it provides information. It may choose to only register the classes of the fields that are most important to it. But that choice is up to the applicant. The Examining Attorney will ask the applicant to indicate the fields of information to assist in classification. The applicant must then decide if it wishes to go forward and register the information services in all of the appropriate classes or choose the one or ones that are most important. But adequate specificity to allow for proper classification will be required for information services, databases and web sites as of January 1, 2002.

Finally, a general note in the area of information services. Information services are classified according to the subject matter of the information. Therefore, the nature of the subject matter or the information provided about the subject matter must be clear enough to allow for proper classification. For example, "information in the field of automobiles" begs the classification question. Does the information pertain to the commercial aspect of purchasing an automobile? If so, it should be classified in Class 35. Does it pertain to the care and maintenance of automobiles? If so, it should be classified in Class 37. Something about insurance or financing? Class 36 is the proper class. Perhaps the safest way to assure that the information is classified correctly is to phrase the subject matter in the nature of a service. To use the same example, "information in the field of automobile financing" is quite adequate to clearly classify the service in Class 36. Another way to clarify the classification of information services is to characterize the information itself. Thus, "providing financing information in the field of automobiles" clearly puts the service in Class 36. As with many other service identifications that require a subject matter of field, the subject matter or field does not have to be as specific as would be required if that were the service itself. But an indication of the nature of the information should be included, either in reference to the type of information or the subject matter of the information provided, to allow for clear classification of the activity.

3. Association services and "promoting the interest of" services

This is another area that will be affected by the reorganization of Class 42. The Explanatory Notes regarding this topic for the present Class 42 simply reads "services (not included in other classes) rendered by associations to their own members." The US has used this language to allow identification of services such as "association services, namely, promoting the interest of lawyers" in Class 42. Theoretically, this identification only encompasses those services provided by an association to its members that could not be included in other classes. In fact, the scope of those activities is quite narrow. It would exclude insurance services, business services, travel arrangements, training and entertainment provided by an association since all of those services are easily classified in other service classes. About the only activity left would be lobbying services and activities related or similar to lobbying activities. Since there is no longer a place for such an activity within the Class Heading or Explanatory Note for the revised Class 42, the USPTO has decided that these services will be classified in Class 35. Indeed, such services further the business interests of the group represented by the association. Even non-business groups such as those that promote reading skills or environmental protection have a "business interest" in promoting their concerns. Therefore, these lobbying activities provided by an association would be most appropriately classified in Class 35.

4. Charitable services, other than monetary

These services are now in Class 42 regardless of the type of service being provided by the charity. These non-monetary charitable services will now be classified by the nature of the service provided, e.g., charitable services, namely, providing shelter for the homeless will be in the new Class 43 with other temporary accommodation services; charitable services, namely, providing tutoring for underprivileged students will be in Class 41 with other educational services.

5. Consulting services

Presently, all consulting services are currently classified in Class 42 except those relating to business (Class 35) and financial or insurance (Class 36.) The revision of Class 42 eliminates the language in the Explanatory Note that provided for all of these other consultation services to be classified in that class. Now, as with information services, consulting services will be classified in the class of the subject matter of the service. And, as with information services, the type of consultation or subject matter of the consultation will have to be set forth with adequate precision to allow for accurate classification.

6. Implementation of the changes

The United States will follow the implementation practice that will be used at WIPO by the International Registration Section (Madrid Agreement and Protocol.) By doing this, US applicants will not be disadvantaged if the US joins the Madrid Protocol. A Madrid application must comply with the edition of the Nice Agreement in effect at the time the application was filed in the home country or it will be rejected with a class change requirement. So the United States will apply the new requirements of the 8th edition of the Nice Agreement to applications filed on January 1, 2002. Applications filed before January 1, 2002 should follow the requirements of the 7th edition of the Nice Agreement. Upon examination, the Examining Attorney may give the applicant the option of remaining in compliance with the 7th edition of the Nice Agreement or amending the application to comply with the classification requirements of the 8th edition of the Nice Agreement. After January 1, 2002, the applicant may, of its own accord, submit an amendment to its application that brings it into compliance with the 8th edition of the Nice Agreement.

Further, the USPTO will not reclassify existing registrations according to the 8th edition of the Nice Agreement upon renewal of those registrations. Registrations will remain classified according to the Nice Agreement edition that was in force at the time of registration.