GUIDANCE ON IDENTIFYING AND/OR CLASSIFYING SPECIFIC GOODS AND SERVICES

From https://tmidm.uspto.gov/id-master-list-public.html#heading-2 see Resources


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


  


















































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 tissue” 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 bracketed wording and corresponding notes) and are acceptable identifications in Class 10 without further qualification.


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 sheets, films and bags 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 used as packaging for food” and “food wrapping plastic film” 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 and resins in extruded form for use in manufacture” (included in the Class 17 Class Heading of the Nice Agreement) and “plastics, 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, namely, knives, forks, and spoons 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 “certain goods made of the materials in this class not otherwise classified by function or purpose, for example, ...padding and stuffing materials of rubber or 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

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 “heat reflective 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, “paint shields, namely, sheets of adhesive 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

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 Class 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 computer hardware is in Class 37 because the activities underlying the customization are upgrading and modification in Class 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.


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 Information

The service “providing information about education” includes information about education, such as academic standards, class schedules, and pedagogy, and is, therefore, properly classified in Class 41. However, the services of “providing educational information…” are classified according to the subject matter of the information. See TMEP §1402.11(b) . All information can be characterized as educational. Thus, describing information as “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.

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