1402.03(d) Identifying Recorded or Downloadable Computer Programs and Software
Computer programs and computer software are goods classified in International Class 9 if they are recorded on media or are downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis. See TMEP §1402.11(a)(xii) for information about the Class 42 service of providing temporary use of online non-downloadable computer programs and software.
An identification for computer programs or computer software must be sufficiently specific to permit determinations with respect to likelihood of confusion. The purpose of requiring specificity in identifying these goods is to avoid the issuance of unnecessary refusals of registration under 15 U.S.C. §1052(d) where the actual goods of the parties are not related and there is no conflict in the marketplace. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).
An identification for computer programs or software must indicate the function or purpose of the goods. The function is the action that the programs/software performs, for example, managing bank accounts, editing photos, or making restaurant reservations. If the computer programs or software are for use in a particular field or are content-specific, the identification should also indicate the specific field or content. The function/purpose and any field/content must be described with sufficient detail to provide public notice as to the nature of the goods and enable the USPTO to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d). See, generally, TMEP §1402.01.
In addition, for applications filed on or after January 1, 2019, identifications for computer programs or computer software in Class 9 must indicate that the goods are "recorded" or "downloadable" in compliance with Nice Classification, 11th edition, version 2019 (NCL 11-2019), based on the inclusion of "computer programs, downloadable," "computer game software, recorded," and "computer game software, downloadable" in the Nice Alphabetical List in Class 9 and the amendment of the wording "computer software" to "recorded and downloadable … computer software" in the Class Heading for Class 9.
Example - Downloadable spreadsheet software for use in the accounting field
Example - Recorded virtual reality software for medical teaching
The USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) includes fill-in entries for various types of recorded or downloadable computer programs and software in Class 9, including computer firmware, middleware, shareware, and mobile applications. These fill-in ID Manual entries may be used to describe the particular function/purpose and any field/content of the goods.
Example - Downloadable computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}
Example - Downloadable mobile applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}
Example - Recorded computer firmware for {specify the function of the program, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if firmware is content- or field-specific, the content or field of use}
Example - Recorded computer programs for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}
See TMEP §1402.04 for additional information regarding the use of fill-in ID Manual entries.
Generally, an identification for recorded or downloadable computer programs/software will be acceptable as long as both the function/purpose and the field of use/content are set forth. However, specifying the field of use or content is not required when the identified computer programs/software has a clear function and is not field- or content-specific.
Example - Downloadable pattern recognition software for sorting spam emails
Example - Downloadable computer software for editing cinematographic film
Example - Recorded computer utility programs for performing computer maintenance
Example - Recorded desktop publishing software
An identification for recorded or downloadable computer programs/software that merely indicates the intended users, field, or industry of the goods will generally be deemed indefinite. However, the ID Manual does include exceptions and lists acceptable entries for certain broader types of recorded or downloadable computer programs/software generally based on industry practice, such as "downloadable anti-spyware software." The ID Manual should be consulted to determine if broader categories or types of recorded or downloadable computer programs/software may be accepted as identifications.
Computer programs/software that are sold preinstalled or embedded in other goods are types of recorded computer programs/software. While recorded computer programs/software are generally classified in Class 9, computer programs/software that are sold embedded or preinstalled on other goods will be classified in the same class as the finished goods on which they are embedded or preinstalled. In such cases, the identification must (1) indicate that the goods are preinstalled or embedded computer programs or computer software, (2) set forth the function and any field of use of the computer programs/software, (3) indicate that the embedded or preinstalled computer programs/software are sold as a component of another finished product, and (4) set forth the common name of the finished product of which the embedded or preinstalled computer programs/software form a part. The identification may indicate that said embedded or preinstalled computer programs/software are "recorded," but it is not required. For example, "preinstalled software for accepting wagers sold as a component of gaming machines" is classified in Class 28, the class of gaming machines. See TMEP §1402.05(a) for additional information regarding identifying and classifying goods that are components.
If computer software or programs are included as part of an identification for kits, systems, gift baskets, or items sold together as a unit, the identification must indicate that the computer software or programs are goods (e.g., recorded or downloadable) to preclude inclusion of a service in an identification of goods. Without a clear indication that the computer software or programs are goods, the identification is overbroad and may encompass, for example, Class 42 technological services. An identification may not combine both goods and services.
Example - Electronic communications systems comprised of computer hardware and recorded software for the transmission of data between two points
See TMEP §1401.05(a) for additional information regarding identifying and classifying kits, gifts baskets, and items sold as a unit. See TMEP §1401.05(d) for additional information regarding identifying and classifying systems.