1401.05 Criteria on Which International Classification Is Based
The Alphabetical List of the Nice Classification contains information about the appropriate class for particular products and services. See TMEP §1401.02(c). See also the Explanatory Notes at the end of each class heading of goods or services. TMEP §1401.02(a). These notes explain the principles and differentiating lines on which the international classes are based.
The General Remarks of the Nice Agreement set forth general criteria for placing goods or services in the international classes. See TMEP §1401.02(a).
1401.05(a) Identification and Classification of Kits, Gift Baskets, and Items Sold as a Unit
The USPTO permits registration of a kit or gift basket in a single international class, even if the identification of goods lists items that are classified in other classes. 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). In addition, although certain types of kits are deemed acceptable for identification and classification purposes without listing the individual components (e.g., face painting kits and teeth whitening kits in Class 3, and first aid kits and ovulation test kits in Class 5), in general, the identification must indicate the type of kit and the principal components.
If the kit is a combination of a number of items around a theme (e.g., nail care kits and student "survival" kits), the class that includes the majority of individual items in the kit controls the classification for the entire kit. Thus, a nail care kit comprising primarily nail polish, nail polish remover, and false nails is classified in Class 3 even if it also includes nail files (Class 8) and an instruction manual (Class 16). In such cases, the identification must indicate the type of kit and list the components, with the items in the predominant class listed first. If the components of the kit do not appear to have a predominant class (e.g., the kit contains two or three items, each in a different class), the applicant may elect which class(es) the kit should be in, but the identification must still list the goods that control the class first in the list of components. A few specific types of kits are listed in the ID Manual; other kits are classified on a case-by-case basis.
The same criteria are applied to the classification of gift baskets.
Similarly, a product may comprise items that are sold as a unit and that, if sold separately, would be classified in different classes. The identification in such cases should include wording to indicate that the goods are "sold as a unit." The predominant elements should be listed first and the item will be classified accordingly.
Example - Computer software is classified in Class 9. Instructional manuals are classified in Class 16. The item "Computer software for investment management and instructional manuals related thereto, sold as a unit" would be classified in Class 9. "Instructional manuals in the field of investment management and computer software relating thereto, sold as a unit" would be classified in Class 16.
1401.05(b) Medical vs. Non-Medical Goods
It is sometimes difficult to determine whether certain pieces of apparatus are classified in Class 9 or Class 10. Class 9 goods include those used for scientific research or industrial purposes, while Class 10 includes goods are used for surgical, medical, dental, or veterinary 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, dental, or veterinary treatment or diagnostic use. For example, a thermometer for medical use is in Class 10, while thermometers other than for medical use are in Class 9. While both items measure temperature, they are usually very different in nature.
Some goods are classified in Class 10 when they are for surgical, medical, dental, or veterinary use and in another class when they are not for surgical, medical, dental or veterinary use. An item should be specified as being for surgical, medical, dental, or veterinary use if it could be in a class other than Class 10 when not for surgical, medical, dental or veterinary use. For example, lasers for medical use are in Class 10, while lasers not for medical use are in Class 9. Items specially adapted for use by invalids or people with disabilities are also classified in Class 10. Thus, toilets adapted for use by persons with disabilities are in Class 10, while toilets (without any further specification) are in Class 11. Finally, if an item is normally not classified in Class 10 ( see the Class 11 example above), it is not necessary to specify that it is not for surgical, medical, dental, or veterinary use when it is classified in its normal class. When that item is used for surgical, medical, dental, or veterinary purposes, the surgical, medical, dental, or veterinary 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 surgical, medical, dental or veterinary purposes and for non-surgical, non-medical, non-dental, or non–veterinary purposes, its purpose must be specified in the identification in order for it to be classified appropriately ( see the example regarding lasers above).
1401.05(c) Classification and Plurality of Uses
A product that has a plurality of uses or aspects is ordinarily classified in a single class. Ex parte Schatz, 87 USPQ 374 (Comm’r Pats. 1950). However, if it can be shown that a product has a plurality of uses or aspects so that two or more classes apply, multiple classification may be permissible. If a product is normally classified in a particular class, an applicant cannot obtain registration in another class merely by identifying an ultimate use of the product in goods that fall in the other class.
Example - Essential oils are classified in Class 3. This item cannot be classified in Class 1 with an indication that it is used in the manufacture of other finished products. Raw or unfinished materials that are used in the manufacture of other finished products may be classified in Class 1. However, an item like essential oils, which is always classified in Class 3 regardless of its ultimate use, cannot be transferred to Class 1 by adding Class 1 qualifying language.
When classification in multiple classes is appropriate, the identification must clearly indicate the basis for multiple classifications with language that is appropriate for the respective classes. Identical language cannot be used. For example, the USPTO will not accept the identification "clock radios," because it is unclear what the goods are and in which class the goods fall - Class 9 for radios or Class 14 for clocks. However, the applicant may adopt either or both of the following identifications - "radios incorporating clocks" in Class 9 or "clocks incorporating radios" in Class 14.
Certain services may also be classified in multiple classes on the basis of the purpose for which the service activity is rendered. While services are in principle classified according to the branches of activities specified in the headings of the service classes and in their Explanatory Notes, if an activity is not specified by any class heading, the purpose may determine classification.
Example – Layout services are classified in Class 35 when specified to be "for advertising purposes" and are classified in Class 41 when specified to be "other than for advertising purposes."
In an application under §1 of the Trademark Act, the specimen(s) should reflect acceptable use of the mark for each of the specified classes and the record must not indicate that the product has only one use or aspect. See The Procter & Gamble Co. v. Economics Laboratory, Inc. modified without opinion, 495 F.2d 1360, 181 USPQ 722 (C.C.P.A. 1974); In re International Salt Co., 166 USPQ 215 (TTAB 1970) ; Mead Johnson Co. v. Watson, 112 USPQ 284 (D.D.C. 1957) , aff’d 253 F.2d 862, 117 USPQ 13 (D.C. Cir. 1958).
Where a single specimen supports multiple classes, the examining attorney need not require multiple copies of the specimen. See TMEP §904.01.
Where a single product or service is classified in more than one class, the applicant must also comply with all other requirements for multiple-class applications. See TMEP §1403.01.
1401.05(d) Identification and Classification of "Systems"
In general, the USPTO will not accept identifications of goods described as "systems" because the terminology is considered indefinite. See TMEP §§1402.01, 1402.01(a). If the applicant submits an indefinite identification of goods described as "systems," (e.g., lawn-care systems), the examining attorney must require an amendment to the identification. The amended identification must specify the nature, purpose, or use of the system and its primary parts or components. The primary parts or components should be specified first in the list of the system’s parts or components. The system is classified in the same class as the primary parts or components. For example, lawn-care systems comprised of lawn mowers and herbicides are in Class 7, which is the same class as the lawn mowers; lawn-care systems comprised of herbicides, pesticides, and lawn sprinklers are in Class 5, which is the same class as the herbicides and pesticides.
Although USPTO policy generally requires further specificity of "systems," the USPTO may accept this wording when the identification is a generic term for a particular category of goods classified in a single international class. For example, "brake systems for vehicles" is an acceptable identification in Class 12 because it is a generic term for a combination of goods functioning as a unit to brake the vehicle. The ID Manual also lists additional acceptable wording for specific types of systems.
1401.05(e) Identification and Classification of "Food Additives"
Under the 10th edition of the Nice Agreement, identifications of goods in the nature of food additives must indicate the generic name of the product (e.g., lecithin, glucose, or pectin) as well as the purpose of the food additive. See TMEP §1401.11(c) for further explanation.
Proper classification may be based on purpose (e.g., industrial purpose as a raw ingredient for manufacturing food, medical purpose as a dietary supplement, or culinary purpose). In the case of food additives for culinary purposes, the particular characteristics of the substance(s) may affect classification. For example, "lecithin for culinary purposes" is classified in Class 29 because lecithin is a fat-like substance found in the cell membranes of plants and animals, and "edible oils and fats" are in the Class 29 class heading. "Glucose for culinary purposes," however, is classified in Class 30 because glucose is a sugar-like substance, and "sugar" is in the Class 30 class heading.