1402.11(b) Information Services
Prior to January 1, 2002, the identification "providing information in a wide variety of fields" was an acceptable identification of services, particularly in the context of Internet websites. The only caveat being that the website or information services did provide information in a wide variety of fields.
Effective January 1, 2002, the "miscellaneous" phrase has been eliminated from the heading of Class 42 ( see TMEP §1401.11(a)). Therefore, the examining attorney must require that the applicant indicate the fields in which it is providing information so that the service can be accurately classified. The fields may be listed somewhat broadly, but with enough specificity to allow classification. "Bundling" of the fields of information (that is, listing all fields of information but allowing the dominant or most significant field to control the classification with the other fields simply "along for the ride") is no longer acceptable. The General Remarks of the Nice Classification provide the following guidance on identifying and classifying information services:
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, e.g., transportation consultancy (Cl. 39), business management consultancy (Cl. 35), financial consultancy (Cl. 36), beauty consultancy (Cl. 44). The rendering of the advice, information or consultancy by electronic means (e.g., telephone, computer) does not affect the classification of these services.
See the Nice General Remarks in TMEP §1401.02(a).
Since information services must now be classified according to the service-related subject matter of the information, the nature or subject matter of the information provided must be specified to allow for proper classification. For example, "information in the field of automobiles" is not sufficiently definite to allow for proper classification. If the information pertains to purchasing an automobile, then the service is classified in Class 35. If the information pertains to the care and maintenance of automobiles, the service is classified in Class 37. If the service involves insurance or financing of automobiles, then Class 36 is the proper class. The best way to ensure that the information is classified correctly may be to identify the subject matter of the service. For example, "providing information in the field of automobile financing" is adequate to classify the service in Class 36. Another way to clarify the classification of information services is to characterize the information itself. Thus, "providing financing information in the field of automobiles" clearly puts the service in Class 36.
As with many other service identifications that require an indication of the subject matter or field, the subject matter or field does not have to be as specific as would be required if the subject matter or field were the service itself. However, an indication of the nature of the information must be included, either by reference to the type of information or the subject matter of the information provided, and must be sufficiently specific to enable proper classification of the services and facilitate informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d). For example, classification cannot be determined from the indefinite wording "providing information in the field of general human interest" or "providing information on topics of general interest." The service-related subject matter of the information is unclear and said wording is too broad to give constructive notice of the subject matter to third-parties to facilitate a likelihood-of-confusion analysis. Similarly, classification cannot be determined from the indefinite wording "providing educational information," and such wording is too broad to facilitate likelihood-of-confusion determinations. Since all information can be characterized as educational, describing information as "educational" is not sufficient to justify classification in Class 41, the class for education services. "Educational information" services are classified in the same manner as all information services - according to the service-related subject matter of the information. "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, specifically healthcare education, and education services are generally classified in Class 41.
An applicant is not required to register in all classes in which it provides information, but may instead choose to register only the classes of the fields that are most important to it. The examining attorney will ask the applicant to indicate the fields of information to assist in classification. The applicant must decide if it wishes to: (1) go forward and register the information services in all of the appropriate classes; or (2) choose the class(es) that are most important to its business and amend the identification to delete reference to fields of information that fall into other classes. See TMEP §1401.04(b).