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.