1401.15 General Summary of Major Changes in Practice Based on the 12th Edition of the Nice Agreement

The 12th edition of the Nice Classification went into effect on January 1, 2023. The requirements of the 12th edition apply only to applications filed on or after January 1, 2023. Any changes in practice pursuant to the 12th edition supersede practice under prior editions and versions of the Nice Classification. A comprehensive view of the changes under the 12th edition can be found in the International Classification of Goods and Services for the Purposes of the Registration of Marks (12th ed. 2023) (Nice 12-2023), which is published by the World Intellectual Property Organization and available online on its website at http://www.wipo.int. Additionally, the impact of the changes on USPTO identification policy and practice can be viewed in the ID Manual.

1401.15(a) Dispensers

The 12th edition of the Nice Classification set up a framework for classification of dispensers involving a general rule and exceptions. Generally, under Nice 12-2023, dispensers are considered storage containers for holding items and dispensing them, as needed. Thus, they are classified in Class 6 when made of metal and in Class 20 when they are not made of metal, regardless of whether the dispensers are automatic or non-automatic. Examples of dispensers that function as storage containers and are classified in Class 6 and Class 20 according to material composition are towel dispensers, toilet paper dispensers, and queue ticket dispensers.

There are exceptions to the general rule. Certain goods that incorporate dispensing actions are classified in classes other than Class 6 and Class 20 according to the function or purpose of the goods. For example, fluid dispensing machines for industrial use and fuel dispensing pumps for service stations are classified in Class 7 because they are considered machines.

When identifying and classifying dispensers for purposes of trademark registration, the Nice Alphabetical List and the ID Manual should be consulted for examples that follow the general rule and for examples of exceptions to the rule.

1401.15(b) Non-fungible Tokens (NFTs)

The primary meaning of non-fungible token (NFT) is "a unique digital identifier that cannot be copied, substituted, or subdivided, that is recorded in a blockchain, and that is used to certify authenticity and ownership (as of a specific digital asset and specific rights relating to it)." https://www.merriam-webster.com/dictionary/NFT (accessed January 29, 2024). While an NFT may include information about a good or service, it is not the good or service itself. For example, an NFT for a piece of digital artwork may contain information, such as the artwork’s name, artist’s name, a record of past ownership, and details about where one can find the artwork. However, the actual digital artwork file is stored elsewhere. Thus, these digital identifiers on a blockchain are similar to certificates of authenticity or ownership and are not considered goods or services under the Trademark Act. See TMEP §§1202.06-1202.06(c) regarding goods in trade and §§1301.01-1301.01(b) regarding activities that are services under the Trademark Act. Accordingly, "non-fungible tokens," "NFTs," and equivalent wording are not acceptable identifications of goods or services because they do not clearly indicate goods in trade or services under the Trademark Act. The USPTO will deny a filing date for §1 or §44 applications with the identifications "non-fungible tokens," "NFTs," or equivalent wording because the wording fails to identify recognizable goods or services. For additional information regarding entitlement to a filing date with respect to identifications, see TMEP §1402.02.

Furthermore, "non-fungible tokens" and "NFTs" are not classifiable under the Nice Classification. For additional information about the Nice Classification, see TMEP §1401.02(a). An identification cannot be accepted if the appropriate class of the goods or services cannot be determined. See TMEP §1402.01(a).

Although the identifications "non-fungible tokens" and "NFTs" do not indicate particular or classifiable goods or services, several entries were added to the Nice Alphabetical List under the 12th edition of the Nice Classification for digital and physical goods that are "authenticated by non-fungible tokens [NFTs]." Under Nice 12-2023, the Committee of Experts added the entry "downloadable digital files authenticated by non-fungible tokens [NFTs]" to the Nice Alphabetical List in Class 9. Under Nice 12-2024, that entry was changed to "downloadable digital image files authenticated by non-fungible tokens [NFTs]." (Emphasis added.) Classification of said goods in Class 9 is based on the wording "recorded and downloadable media" in the Nice Class Heading for Class 9 and the Nice Alphabetical List entry "downloadable image files" in Class 9. Additionally, the entry "downloadable digital music files authenticated by non-fungible tokens [NFTs]" was added to the Nice Alphabetical List in Class 9 and, as an example of physical goods authenticated by NFTs, "clothing authenticated by non-fungible tokens [NFTs]" was added to the Nice Alphabetical List in Class 25. For additional information regarding the Nice Alphabetical List, see TMEP §1401.02(c).

While the additional entries to the Nice Alphabetical List provide guidance on classifying goods, the USPTO may require additional clarification and specificity when identifying goods. Under USPTO policy, an identification must set forth the particular goods on or in connection with which the applicant uses or has a bona fide intention to use the mark in commerce. See TMEP §1402.01. If accurate, an identification may also indicate that the goods are "authenticated by non-fungible tokens (NFTs)." An identification for goods authenticated by non-fungible tokens must comply with USPTO requirements for acceptably identifying goods of the type indicated. See TMEP §1402.01. For example, identifications for downloadable image, audio, or video files authenticated by non-fungible tokens must indicate the subject matter of the files. This information is required in order to provide public notice regarding the nature of the goods and to enable informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).

An identification must not include square brackets around the acronym NFT. In general, identifications must not include square brackets; however, parentheses may surround acronyms following the wording for which the acronym stands, such as "non-fungible tokens (NFTs)." See TMEP §1402.12.

Both physical and digital goods can be authenticated by non-fungible tokens. Examples of acceptable identifications in Class 9 for downloadable files authenticated by non-fungible tokens include the following:

Downloadable music files authenticated by non-fungible tokens (NFTs);
Downloadable image files of sneakers authenticated by non-fungible tokens (NFTs); and
Downloadable multimedia file containing video relating to sports highlights authenticated by non-fungible tokens (NFTs).

Examples of physical goods authenticated by non-fungible tokens include the following:

Handbags authenticated by non-fungible tokens (NFTs) in Class 18; and
Sneakers authenticated by non-fungible tokens (NFTs) in Class 25.

For additional guidance on identifying and classifying goods authenticated by NFTs or services related to NFTs, consult the ID Manual.

For information regarding the identification of retail store services featuring goods authenticated by NFTs, see TMEP §1402.11(a)(vi).

1401.15(c) Virtual Services

The term "virtual" is defined as "being on or simulated on a computer or computer network." https://www.merriam-webster.com/dictionary/virtual (accessed February 13, 2024). Thus, virtual services include both real-world service activities that are delivered by means of a computer or the internet and simulations of real activities that take place in virtual worlds or virtual environments.

The Nice Classification General Remarks were revised under Nice 12-2024 to provide the following classification guidance pertinent to virtual services:

The means by which a service is rendered in principle does not have any impact on the classification of the services. For example, financial consultancy is classified in Cl. 36 whether the services are rendered in person, by telephone, online, or in a virtual environment. However, this remark does not apply if the purpose or result of a service changes due to its means or place of delivery. This is the case, for example, when certain services are rendered in a virtual environment. For instance, transport services belonging to Cl. 39 involve the moving of goods or people from one physical place to another. However, in a virtual environment, these services do not have the same purpose or result and must be clarified for appropriate classification, e.g., simulated travel services provided in virtual environments for entertainment purposes (Cl. 41).

See TMEP §1401.02(a) and §1401.05 for information regarding the General Remarks of the Nice Classification. Consequently, virtual services are classified according to the nature of the services and their relation to the real world, that is, whether the virtual services have the same purpose or result as the real activity in the real world.

Virtual services include real-world services provided online, in virtual environments, or virtual worlds. They are classified in the same class as the real-world services when the virtual services have the same purpose or result as the services in the real world. For example, online banking services rendered in virtual environments provide the same result to customers as banking services in physical banks. The virtual environment is merely the means by which the banking services are provided. Thus, both "banking services" and "online banking services rendered in virtual environments" are classified in Class 36.

Virtual services also include services that merely simulate real-world services in virtual environments. If the virtual service simulates a real-world service and has the same result or purpose as its real-world counterpart, then the virtual and real-world services are classified in the same class. For example, "simulated live musical performances by avatars in virtual worlds for entertainment purposes" is classified in the same class as the real-world services of live performances by a musical group, i.e., Class 41. Both the real-world and simulated musical performances have the same purpose or result of providing music for entertainment purposes.

In some cases, a virtual service that simulates a real-world service has a different purpose or result from its real-world counterpart. For example, simulated restaurant services provided in virtual environments for entertainment purposes feature images of simulated food and beverages that cannot be consumed. Thus, the purpose or result of the simulated restaurant services differs from real-world restaurants where food may be consumed. "Simulated restaurant services provided in virtual environments for entertainment purposes" is classified in Class 41 as an entertainment service, while "restaurant services" is classified in Class 43.

If a virtual service simulates a real-world service, but has a different purpose or result from its real-world counterpart, the virtual service is typically a Class 41 entertainment service. Therefore, such identifications must generally indicate (1) the nature of the activity, (2) that the activity is a simulation, and (3) that the services are rendered in virtual environments or in a virtual world for entertainment purposes. For example, "simulated hair cutting services for avatars provided in virtual environments for entertainment purposes" is an acceptable identification in Class 41. While hair cutting services in the real-world are classified in Class 44, the virtual services are entertainment services.

Identifications for simulations of real-world services in virtual environments that are rendered for a non-entertainment purpose must be carefully evaluated to confirm they meet the criteria for services under TMEP §1301.01. For example, a company promoting the sale of its own services is doing so for its own benefit rather than rendering a service for others. See TMEP §1301.01(a)(ii). Thus, if a virtual activity merely advertises applicant’s own services, it may not constitute a service under the Trademark Act. For additional information, see TMEP §§1301.01-1301.01(b)(vi).

For additional guidance on identifying virtual services, consult the ID Manual.