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 and/or 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 bases/web sites/home 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.

General comments:

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.

For further information in this area contact jmarshal@uspto.gov