1401.05 Criteria on Which International Classification Is Based
The General Remarks of the Nice Classification set forth general criteria for placing goods or services in the international classes. See TMEP §1401.02(a).
The Class Headings of the Nice Classification indicate the type of goods or services appropriate to each class. Id. The Explanatory Notes at the end of the class headings of goods or services explain the principles and differentiating lines on which the international classes are based.
The Alphabetical List of the Nice Classification contains information about the appropriate class for particular products and services. See TMEP §1401.02(c).
1401.05(a) Identification and Classification of Kits, Gift Baskets, and Items Sold as a Unit
The USPTO permits registration in a single international class of a kit or gift basket comprised of goods, even if the identification includes components that are goods classified in other classes. This practice is not recognized by the Nice Classification and is not followed by the International Bureau of WIPO nor by most other national trademark offices. See TMEP §1902.02(g)(iii) regarding identification of kits and gift baskets in applications for international registration.
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 its principal components. The list of kit components must only include goods and must not include services. An identification for kits that lists both goods and services as kit components is unacceptable because it improperly combines goods and services classified in multiple classes in a single identification. See TMEP §1402.01(a) regarding general guidelines for acceptable identifications and TMEP §1403 et seq. for information regarding combined or multiple-class applications. An identification for a kit that includes "computer software" as a component of the kit would be indefinite, because it is unclear if "computer software" refers to goods or services. For example, recorded or downloadable computer software and programs are classified in Class 9 as goods, while providing on-line non-downloadable computer software is classified in Class 42. See TMEP §§1402.03(d) and 1402.11(a)(xii). If computer software or computer programs are listed as components of a kit, the identification must indicate that the computer software or computer programs are recorded or downloadable to preclude inclusion of services in an identification of goods. The identification must also specify the function and any field of use of the computer software or programs.
Kits that are deemed acceptable for identification and classification purposes without listing the individual components are included in the ID Manual and are generally classified according to purpose; other kits are classified on a case-by-case basis using the classification principles set forth below.
Generally, kits are identified and classified in two ways:
- (1) If the kit is for the purpose of making a single object, it is classified by the item it is intended to make. For example, kits for making wine consisting of fresh grapes and chemicals for fermenting wine would be classified in Class 33, the class for wine, even though the individual components would be classified in other classes (e.g., fresh grapes in Class 31 and chemicals for fermenting wine in Class 1).
- (2) If the kit is a combination of a number of components around a theme (e.g., nail care kits), the class that includes the majority of individual components in the kit generally controls the classification for the entire kit. Thus, a nail care kit comprised of nail polish (Class 3), nail files (Class 8), nail polish remover (Class 3), a printed instruction manual (Class 16), and false nails (Class 3) is classified in Class 3, which is the class of the majority of individual components in the kit; however, the identification must be modified to list all of the components in Class 3 at the beginning of the list of components. In such cases, the identification must indicate the type of kit and list the components, with all of the items in the predominant class listed first. Components that are secondary should be set forth after the primary components.
Example – "Nail care kits comprised primarily of nail polish, nail polish remover, and false nails and also including nail files and printed instructions" is acceptable in Class 3, the class of the primary components which are listed first in the list of kit components.
Example – "Nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions" is acceptable in Class 3, the class of the primary components which are listed first in the list of kit components.
Example – "Nail care kits comprised of nail polish, nail files, nail polish remover, a printed instruction manual, and false nails" is properly classified in Class 3, but is not acceptably worded because the predominant components in Class 3 (i.e., nail polish, nail polish remover, and false nails) are not all listed first in the list of kit components.
If the goods are kits around a particular theme, but the majority of components are secondary components, the identification should indicate that the kits are comprised "primarily" of specific components in a particular class and subsequently indicate that the kits are "also consisting of" the secondary items. The secondary components may be in a different class or classes from the primary component(s). In that case, the kits are classified in the class of the primary components, even if the primary components are not the majority of components in the kits.
Example – "Nail care kits comprised primarily of nail polish and also including nail files and printed instructions" is acceptable in Class 3, because nail polish is clearly indicated as the primary component and appears first in the list of kit components.
If the individual components of the kit do not appear to have a predominant class (e.g., the kit contains two or three components, each in a different class), the applicant may elect which class(es) the kit should be in, but the identification must still list all of the goods in the elected class first in the list of kit components.
Example – "Tool kits comprising hand saws and power-driven saws" is acceptable in Class 8 because there is no predominant class for the components in the kit and "hand saws," which are listed first in the list of components, are classified in Class 8.
Example – "Tool kits comprising power-driven saws and hand saws" is acceptable in Class 7 because there is no predominant class for the components in the kit and "power-driven saws," which are listed first in the list of components, are classified in Class 7.
Example – "Tool kits comprising carpenter’s levels, hand saws, power-driven saws, and carpenters’ rules" is not acceptable in Class 9 because the components in Class 9 are not all listed first in the list of components. The components appropriate to Class 9, carpenter’s levels and carpenters’ rules, must all be listed first in the list of components for an acceptable identification in Class 9.
Classification of multi-component kits that have no predominant components is determined by the first listed component. Rearranging the order of the components listed for kits which have no predominant components will impact the classification, with the class of the first-listed component dictating the appropriate class for the kits.
Example – "Tool kits comprising carpenter’s levels, hand saws, and power-driven saws" is acceptable in Class 9 because there is no predominant class for the kit components and "carpenter’s levels," which are listed first in the list of components, are classified in Class 9.
Example - "Tool kits comprising hand saws, power-driven saws, and carpenter’s levels" is acceptable in Class 8 because there is no predominant class for the kit components and "hand saws," which are listed first in the list of components, are classified in Class 8.
Example - "Tool kits comprising power-driven saws, carpenter’s levels, and hand saws" is acceptable in Class 7 because there is no predominant class for the kit components and "power-driven saws," which are listed first in the list of components, are classified in Class 7.
The same criteria are applied to the classification of hobby craft kits. For example, if the hobby craft kit is for the purpose of making a single object, it would be classified by the item it is intended to make.
Example – "Hobby craft kits for making toy model houses comprising wooden craft sticks and craft glue for stationery or household purposes" would be classified in Class 28, the class for toy models, even though the individual components would be classified in other classes (e.g., wooden craft sticks in Class 20 and craft glue for stationery or household purposes in Class 16).
If the hobby craft kit is a combination of a number of components around a theme (e.g., Halloween hobby craft kits), the class that includes the majority of individual components in the hobby craft kit generally controls the classification for the entire kit. In such cases, the identification must indicate the type of kit and list the components, with all of the items in the predominant class listed first. Components that are secondary should be set forth after the primary components.
Example – "Halloween hobby craft kits comprised primarily of permanent markers, printed sewing patterns, stencils, fabric glue for household use and also including felt cloth and thread" is acceptable in Class 16, the class of the primary components which are listed first in the list of kit components.
Example – "Halloween hobby craft kits comprised of permanent markers, printed sewing patterns, stencils, fabric glue for household use and felt cloth" is acceptable in Class 16, the class of the primary components which are listed first in the list of kit components.
Example – "Halloween hobby craft kits comprised of permanent markers, printed sewing patterns, stencils, felt cloth, and fabric glue for household use" is properly classified in Class 16, but is not acceptably worded because the predominant components in Class 16 (i.e., permanent markers, printed sewing patterns, stencils, and fabric glue for household use) are not all listed first in the list of kit components.
The same criteria are applied to the classification of gift baskets.
Similarly, a product may comprise goods that are sold together as a unit. The identification in such cases must include wording to indicate that the goods are "sold as a unit" and must specify the items that comprise the unit, such as "Demitasse sets comprised of cups, saucers and stirring spoons sold as a unit" in Class 21. Goods sold as a unit are classified in a single class even if they are comprised of items that, if sold separately, would be classified in different classes. All of the predominant elements should be listed first in the identification and the collection of items sold as a unit will be classified accordingly.
Example – Printed children’s books are classified in Class 16. Dolls are classified in Class 28. "Printed children's books and dolls sold as a unit" would be classified in Class 16. "Dolls and printed children's books sold as a unit" would be classified in Class 28.
Identifications for items "sold as a unit" must be limited to goods sold as a unit. As indicated above, recorded or downloadable computer programs and computer software are classified in Class 9 as goods, while providing on-line non-downloadable computer software is classified in Class 42 as a technological service. See TMEP §§1402.03(d) and 1402.11(a)(xii). Thus, if computer software or computer programs are sold as a unit with other products, the identification must indicate that the computer software or computer programs are goods (e.g., recorded or downloadable) to preclude inclusion of services in an identification of goods. The identification must also specify the function and any field of use of the computer software or programs. For example, "medical apparatus and instruments for monitoring blood oxygen saturation, blood gas concentrations, vital signs and respiratory events, and downloadable software for recording, processing, and transmitting medical data, for use therewith, sold as a unit" is an acceptable identification in Class 10.
Identifications must set forth the particular goods or services to enable proper classification and to facilitate determination of likelihood of confusion under 15 U.S.C. §1052(d). See TMEP §1402.01. Thus, identifications for kits, gift baskets, and items sold as a unit must indicate the particular components of the kits and gift baskets and the particular items sold as a unit using definite terms that are clear, specific, and accurate to identify the primary components of the kit. See id. For example, an identification for "kits comprised of one or more of the following school supplies – pencils, graduated rulers, and scissors" is unacceptable because the wording "one or more of the following" creates ambiguity as to the nature of the goods. The components of the aforesaid kits are also classified in Classes 16, 9, and 8 respectively. Without a clear indication of the kit components, the goods cannot be appropriately classified, and likelihood of confusion under 15 U.S.C. §1052(d) cannot be determined.
1401.05(b) Medical vs. Non-Medical Goods
It is sometimes difficult to determine whether certain apparatus and instruments are classified in Class 9 or Class 10. While photographic, optical, measuring, testing, and scientific apparatus and instruments are generally classified in Class 9, surgical, medical, dental, or veterinary apparatus and instruments used for the diagnosis, treatment, or improvement of function or condition of persons or animals are generally classified in Class 10. Certain goods could be classified in both classes, with appropriate wording, depending upon their use. For example, thermometers are commonly used for both medical and non-medical purposes. Thermometers for medical use are in Class 10 because they function as medical instruments, while thermometers other than for medical use, such as meat thermometers, are in Class 9 because they function as measuring apparatus. While both items measure temperature, they are usually very different in nature and classified in different classes based on their specific uses.
Goods should be specified as being for surgical, medical, dental, or veterinary use only when the items could be in a class other than Class 10 when not for surgical, medical, dental, or veterinary use. When goods, like thermometers, are commonly used for both surgical, medical, dental, or veterinary use and non-surgical, medical, dental or veterinary use, it is sufficient to indicate that the goods are "for medical use" or "not for medical use," as appropriate, to justify the classification. The mere addition of "for medical use" to an identification is not sufficient to justify classification of items in Class 10 if the goods are not directly used for the diagnosis, treatment, or improvement of function or condition of persons or animals.
If an item is normally not classified in Class 10, 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. For example, "thread" (without any further specification) is an acceptable identification in Class 23, while "surgical thread" is classified in Class 10 based on its surgical use. To justify classification of goods not commonly used for surgical, medical, dental, or veterinary use in Class 10, the identification must indicate the particular surgical, medical, dental, or veterinary use of the goods in diagnosing, treating, or improving the function or condition of persons or animals.
In addition, the Nice Class Heading for Class 10 includes the wording "therapeutic and assistive devices adapted for persons with disabilities." See TMEP §1401.02(a). For example, while "toilets" are classified in Class 11, "toilets adapted for medical patients or for use by disabled persons" are in Class 10; while "spoons being tableware" are classified in Class 8, "spoons for patients with tremor" are in Class 10.
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 in multiple classes. 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.,175 USPQ 505 (TTAB 1972), 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." This terminology fails to satisfy the requirement that the application specify the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce and is thus indefinite because it may encompass goods in more than one class. See TMEP §§1402.01, 1402.01(a). For example, 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.
The list of primary parts or components of the system must include only goods and must not include services. For example, "recorded" or "downloadable" computer programs and computer software are classified in Class 9 as goods, while providing on-line non-downloadable computer software is classified in Class 42 as a technological service. See TMEP §§1402.03(d) and 1402.11(a)(xii). Thus, if computer software or computer programs are components of a system, the identification must clearly indicate that the computer software or computer programs are goods (e.g., "recorded" or "downloadable" computer software) to preclude inclusion of services in an identification of goods. The identification must also specify the function and any field of use of the computer software or programs. For example, "home automation systems comprised of computer hardware, wireless and wired controllers, and downloadable software for automating kitchen appliances, lighting, electrical power and security alarms" is an acceptable identification in Class 9.
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 lists additional acceptable wording for specific types of systems.
1401.05(e) Identification and Classification of "Food Additives"
Under the 10th and 11th editions 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 §1401.13(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 "oils and fats for food" 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.