1402.11(e)    Consulting Services

Prior to January 1, 2002, all consulting services were classified in Class 42 except those relating to business (Class 35) and financial or insurance (Class 36).  Effective January 1, 2002, consulting services are classified in the class of the service-related subject matter of the service. See TMEP §§1401.11–1401.11(a).

The General Remarks of the Nice Classification provide the following guidance on identifying and classifying consulting services:  

Services that provide advice, information or consultancy are in principle classified in the same classes as the services that correspond to the subject matter of the advice, information or consultancy, 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).

As with many other service identifications that require an indication of the subject matter or field, the service-related subject matter or field of the consultation service does not have to be as specific as would be required if the subject matter or field were the service itself. However, the service-related subject matter or field 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 consultation in the field of general human interest" or "consulting on topics of general interest." The service-related subject matter of the consultation service is unclear from "general human interest" or "general interest," and said wording is too broad to give constructive notice of the subject matter to third-parties to facilitate a likelihood-of-confusion analysis.

Examples of acceptable identifications for consulting services include the following:

  • "Consulting in the field of telecommunication services, namely, transmission of voice, data, and documents via telecommunications networks," in Class 38.
  • "Consulting in the field of telecommunications technology," in Class 42.
  • "Consulting in the field of maintenance and repair of telecommunications network hardware, apparatus, and instruments," in Class 37.

Technical consulting is like any other consultation service, although it focuses primarily on how things work.  Thus, the field or subject matter of technical consultation services must be set forth with adequate specificity to allow for accurate classification in accordance with the related branch of activity specified in the Class Headings.  

Examples of acceptable identifications for technical consulting services include the following:

  • "Technical consulting related to the installation of oil and gas equipment, control systems, and machinery," in Class 37.
  • "Technical consulting related to the manufacturing of oil and gas equipment, control systems, and machinery," in Class 40.
  • "Technical consultancy in the field of environmental science," in Class 42.

It should be noted that technology consulting is classified in Class 42 because it encompasses consulting about the technology aspects of the subject matter given, and "technological services" appears in the Class 42 Class Heading. While technology consulting is clearly classified in Class 42, identifications for technological consulting services must also indicate the particular field of the consultation in order to facilitate likelihood-of-confusion determinations, for example, "technological consulting in the field of cryptocurrency."

The ID Manual previously included the entry "Computer consultation" in Class 42, but that entry was deleted because it is indefinite. See TMEP §1401.10 regarding the effective date of changes to the ID Manual. As indicated above, consultation services are classified in the same classes as the services that correspond to the subject matter of the consultation. See TMEP §1401.02(a). The service-related subject matter of "computer consultation" is unclear and could encompass services in multiple classes. For example, "consultation about the repair of computer hardware" is classified in Class 37 (the class for computer hardware repair services), and "consultation about the maintenance and updating of computer software" is classified in Class 42 (the class for maintenance and updating of computer software). "Computer technology consultancy" is also classified in Class 42 based on the wording "technological services" in the Class 42 Class Heading.