1402.11(a)   Computer Services

Services Classified in Classes 35, 36, 37, 39, 40, 41, 44, and 45

Any activity consisting of a service that ordinarily falls in these classes (e.g., real estate agency services, banking services, dating services), and that happens to be provided over the Internet, is classified in the class where the underlying service is classified.  For example, banking services are classified in Class 36 whether provided in a bank or online.

The following are examples of some acceptable identifications:

  • "Providing banking services via the Internet, in Class 36."
  • "Arranging travel tours via the Internet, in Class 39."
  • "Promoting the goods and services of others by preparing and placing advertisements on websites accessed through the Internet, in Class 35."
  • "Electronic payment, namely, electronic processing and transmission of bill payment data, in Class 36."
  • "Providing social introduction services by means of an Internet website, in Class 45."

Content Providers

The service of providing information via the Internet is classified in the class of the information subject.  Entities that provide these services by computer are considered to be "content providers," that is, they provide the informational or substantive content of a website and/or home page.  If an entity provides information in a wide variety of fields, the applicant must select the subject matter to be protected and classify the services accordingly (e.g., business information in Class 35, banking information in Class 36, home repair information in Class 37).  See TMEP §1402.11(b) regarding information services.

Some acceptable identifications:

  • "Providing information in the field of banking via websites on the Internet, in Class 36."
  • "Providing a website featuring information in the field of banking, in Class 36."  This is purely an information provision service and should be treated accordingly.  
  • "Providing information in the field of travel destinations, in Class 39."

Class 38:  Provision of Telecommunications Connections to the Internet

Telecommunication connections, such as those provided by AT&T® and Verizon®, are the wired, or wireless, electronic means by which one telecommunications-enabled device, such as a telephone, smartphone, or computer, communicates with another telecommunications-enabled device.  The Class 38 activities of a telecommunications connection provider do NOT include providing the computer hardware or software that enables the electronic transmission of the data. These telecommunications services connect the user’s device to the internet via wired or wireless means.

Just because an applicant is conducting an internet-based activity or rendering a service that involves electronic transmission of data, the applicant’s service is not automatically considered a telecommunications service in Class 38.  For example, an applicant who merely provides a website featuring sports information is not providing "electronic transmission of messages and data in the field of sports," in Class 38.  The telecommunications services providers, such as AT&T® and Verizon®, are providing the Internet connections for the actual transmissions; the applicant is merely making the information available.

"Online bulletin boards" and "chat rooms" are classified in Class 38 regardless of the content or subject matter.  The rationale for this stems from the fact that these services allow individuals to communicate with each other, like other Class 38 services.

"Providing multiple-user access to the Internet," is classified in Class 38.  Note:  This identification covers those services provided by Internet Service Providers ("ISPs"), such as Cox®, AOL®, Comcast®, Verizon®, and AT&T®.  ISPs provide the computer connection (often using the Class 38 telecommunications services of other entities) that enables a computer user to access the databases and websites of others via the Internet.  These entities are considered "access providers" in that they provide the computer connection needed for a computer user to access a content provider.  The word "access" should be limited to these services and should not be used in describing the services of a content provider.

Some acceptable identifications:

  • "Provision of telecommunications connections to the Internet, in Class 38."
  • "Electronic mail services, in International Class 38."
  • "Broadcasting television or radio programs via the Internet, in Class 38."
  • "Webcasting audio/visual programming via the Internet, in Class 38."
  • "Video and audio teleconferencing via the Internet, in Class 38."
  • "Providing an online bulletin board in the field of medicine, in Class 38."
  • "Providing online chat rooms for transmission of messages among computer users concerning topics of interest to teens, in Class 38."
  • "Providing multiple-user access to the Internet, in Class 38."  Many ISPs have expanded their services to encompass content-based services for their subscribers.  The "providing multiple-user access" identification only covers the ISP services.  If the applicant wishes to protect its "content-based" services, it must identify those services with specificity and pay any additional fees, as appropriate.

Office-Function-Type Computer Services

These services are essentially office function services (e.g., filing and record keeping) that happen to be conducted with the use of a computer:

  • "Data processing services, in Class 35."
  • "Computer data entry services, in Class 35."

Computer Installation and Repair Services

The applicant must distinguish between computer hardware and computer software.  For example: 

  • "Installation, maintenance, and repair of computer hardware systems, in Class 37."
  • "Installation, maintenance, and updating of computer software systems, in Class 42."

If the installation and maintenance services refer to networks or systems, the service should be classified in Class 37.  For example: 

"Installation, maintenance, and repair of computer systems, in Class 37."

If the applicant applies for "technical support services," the examining attorney will require the applicant to further specify the nature of the services. Technical support services may include services classified in more than one class, including the following: 

  • "Installation and maintenance services in either Class 37 or 42 (depending on whether the subject matter is hardware or software);"
  • "Technical support services, namely, repair of computer hardware, in Class 37;"
  • "Technical support services, namely, providing technical advice related to the manufacture of {indicate goods being manufactured}, in Class 40;"
  • "Technical support services, namely, troubleshooting of computer software problems, in Class 42;" and
  • "Technical support services, namely, diagnosis of computer hardware and software problems in Class 42."

Computer Retail Services

Retail (and distributorship) services are classified in Class 35 no matter how the services are conducted.  Either of the following identifications is acceptable: 

  • "Computerized online retail store services in the field of [specify], in Class 35."
  • "Providing a website used to place online orders in the field of [specify], in Class 35."

Computer Entertainment Services

Generally, entertainment services are classified in Class 41.  However, the type of entertainment activity the applicant is conducting must be specified.  Therefore, the identification "providing a website featuring entertainment" is not acceptable.  Instead, one of the following may be more appropriate: 

If the services comprise an "online game:"

  • "Entertainment services, namely, providing a multiple-user online computer game, in Class 41."
  • "Providing a computer game that may be accessed network-wide by network users, in Class 41."

If the services involve "chat rooms:"  "Providing online chat rooms for transmission of messages among computer users concerning [indicate field or subject of chat room], in Class 38."

If the services involve providing content:  "Providing a website featuring information in the field of computer gaming entertainment, in Class 41."  See TMEP §1402.11(b).

If the services involve providing a website from which a user can receive "webcasted" transmissions over the Internet:  "Broadcasting (radio programs, television programs, multimedia programming, etc.) via the Internet, in Class 38."

If the services consist of providing a particular online show "webcasted" over the Internet:  "Entertainment, namely a continuing [indicate type, e.g., variety, news, comedy] show broadcasted over the Internet, in Class 41."

Computer Design and Development Services

Generally, these services are in Class 42.  It is important to remember that these services must be performed for the benefit of others.  If an applicant is developing its own software, it is not engaging in a recognized service.  (See TMEP §§1301.01 et seq. regarding activities that do not constitute services.)  If the services are identified as "computer design and development services," the specimens must show that the applicant provides these services for other parties.  Some acceptable identifications are: 

  • "Computer software design and development services for others, in Class 42."
  • "Computer services, namely, creating and maintaining websites for others, in Class 42."
  • "Duplication of computer programs, in Class 42."

Database Services

Prior to January 1, 2002, the service of providing an online database via the Internet was classified in Class 42 if the database included a wide variety of subject matter.  However, effective January 1, 2002, the subject matter or content of the online database now governs the classification of the services.  Applicants must now separate the subject matter or content of the databases into their appropriate individual international classes.  Acceptable identifications include:

  • "Providing an online electronic database on the Internet in the field of business evaluations of automobile companies, in Class 35."
  • "Providing an online electronic database on the Internet in the field of banking, in Class 36."
  • "Providing an online electronic database on the Internet in the field of computer programming, in Class 42."
  • "Providing an online electronic database on the Internet in the field of cosmetology, in Class 44."

In determining whether the specimens support "database provision services," look for the following clues:

  • See if the specimens use words like "to access our database," "our database includes…," etc.
  • Confirm that the information provided online is capable of being searched, sorted, re-arranged, and indexed like a traditional database.
  • If the specimens consist of merely a series of web pages, this is NOT a database.  A more appropriate identification would be "providing a website on the Internet featuring information in the fields of ________, in Class ___ (class dependent on the content)."

Other common database services include the following:

  • "Database development services, in Class 42."
  • "Computerized database management services, in Class 35."

See TMEP §1402.11(b) regarding information services.

Online Publications

All online publications are classified in Class 41 no matter what the subject matter.  An acceptable identification would be:

"Computer services, namely providing online [indicate specific nature of publications, e.g., magazines, newsletters, etc.] in the field of [indicate subject matter of publication], in Class 41."

A column or section of an online publication would be identified as "computer services, namely, providing a [column or section] in an online [indicate type of publication] in the field of [indicate subject matter of publication]," in Class 41.

The examining attorney should verify from the specimens that the information is presented in a "publication" format.  An online magazine in Class 41 must really look and act like a magazine, i.e., contain monthly or periodic articles, sections, features, advertisements, credits, etc.  If it does not, a more appropriate identification would be "providing a website on the Internet featuring information in the field of ________, in Class ___" (classification dependent on the content).

If an applicant identifies its goods as "publications, namely ...," and it becomes apparent during examination that the goods are in fact online publications, the applicant may amend the identification to indicate that the goods are online publications in Class 41, since the term "publications" is broad enough to encompass both printed and online publications.  On the other hand, if the applicant identifies its goods as "printed publications...," the identification cannot be amended to indicate that the goods are "online publications," because this would exceed the scope of the original identification.  37 C.F.R. §2.71(a).