1401.11 General Summary of Major Changes in Practice Based on the 10th Edition of the Nice Agreement
A number of changes in the international classification of goods and services occurred in connection with the 10th edition of the Nice Classification System, which went into effect January 1, 2012. Thus, the requirements of the 10th edition apply only to applications filed on or after January 1, 2012. Several notable changes are discussed below. A comprehensive view of the changes and their impact on USPTO identification and classification policy can be found in the International Classification of Goods and Services for the Purposes of the Registration of Marks (10th ed. 2011), published by the World Intellectual Property Organization and available online at http://www.wipo.int, and the USPTO ID Manual, available via the USPTO website at http://tess2.uspto.gov/netahtml/tidm.html.
1401.11(a) Electric/Electrothermic Goods
Under the 10th edition, a number of electric/electrothermic goods that were previously in Class 9 are now classified in the same class as their non-electric or non-electrothermic counterparts. Electric/electrothermic goods transferred from Class 9 to Class 7 include vending machines, electric door openers, and electrodes for welding machines. Cigar lighters for automobiles were transferred from Class 9 to Class 12 (as a land vehicle part). Automatic turnstiles were deleted from Class 9 because they are considered building materials and thus are classified according to material composition, with metal turnstiles classified in Class 6 and non-metal turnstiles classified in Class 19. The ID Manual should be consulted for the identification and classification of other electric/electrothermic goods.
1401.11(b) Amusement and Game-Playing Apparatus
Under the 9th edition, "hand-held units for playing electronic games for use with external display screens or monitors" were classified in Class 9, and "hand-held units for playing electronic games other than those for use with external display screens or monitors" were classified in Class 28. Under the 10th edition, all amusement and game-playing apparatus, whether for use with an external monitor or display screen or having a built-in monitor or display screen, is classified in Class 28.
1401.11(c) Food Additives
Under the 10th edition Nice Alphabetical List, food additives are classified in Classes 1, 5, and 29-33 according to their particular purposes. Previously, the Nice Alphabetical List recognized only two types of food additives - those for medical purposes in Class 5 and those in the nature of raw materials in Class 1. The 9th edition was silent on the classification of food additives used as ingredients in cooking and/or baking for domestic purposes. Under the 10th edition, food additives for industrial purposes, including those for use in manufacturing food, are classified in Class 1. Additionally, food additives for medical purposes and for use as dietary supplements are classified in Class 5, and food additives for culinary purposes are classified in Classes 29-33, according to the particular nature of the food additive. The 10th edition also requires that the food additive be specifically named (e.g., "lecithin for culinary purposes" in Class 29). This requirement is especially important when the food additives are for culinary purposes because classification of such goods is determined by their nature.
1401.11(d) Dietetic Substances and Meal Replacements
The 10th edition amended the Class 5 class heading to include "meal replacements, dietetic food and beverages, adapted for medical or veterinary use." For classification in Class 5, these three items must be identified as being "adapted for medical use" (or include other language indicating that these items are adapted for a particular medical use) to make clear that their purpose and use are not as part of a regular diet for human beings or animals. The specific meal replacement, dietetic food, or dietetic beverage item must also be indicated.
The Class 5 class heading was also amended to exclude "meal replacements, dietetic food and beverages not for medical or veterinary consumption (Cl. 29, 30, 31, 32 or 33)." This specific exclusion is a corollary to the inclusion discussed above. Previously, all meal replacements were classified in Class 5, and the Nice Agreement was silent regarding how to classify dietetic food and beverages that were not for medical or veterinary purposes. Meal replacements and dietetic food and beverages that are not for medical or veterinary use must now be identified with adequate specificity to determine the particular food or beverages classes in which they should be classified.
1401.11(e) Marketing Services
"Marketing" was added to the Nice Alphabetical List, in Class 35, under the 10th edition. The Nice Agreement was previously silent regarding marketing services. The addition of "marketing" reflects the recognition by the Committee of Experts that the most common use of the term "marketing" refers to promoting the goods and services of others.