1402.11    Identification of Services

This section addresses identifications of particular types of services.

The primary major requirements for an acceptable identification of services are:  (1) the identification must be definite; (2) it must use the common name or terminology for the services, so as to be readily understandable; (3) it must accurately describe the services; and (4) it must constitute a service as contemplated by the Trademark Act, and not merely refer to collateral or related activities associated with rendering the service. See TMEP §§1301.01-1301.01(b)(v) for information on what constitutes a service.

Example - Where a mark indicates the source of checking account services, the identification "banking services in the nature of a checking account" is more accurate than the general identification "banking services," which is inclusive of services that may not be associated with the mark.  The former identification is more definite, and clearly stated.  On the other hand, if a service mark indicates the source of a bank’s many services, then the more general identification "banking services" would be appropriate.  Thus, either of these identifications could be accepted depending on the particular circumstances, including the nature of the mark and its use or intended use.  In both cases, the services would be classified in Class 36.

Example - "Radio broadcasting services" (Class 38) would be an appropriate identification when a radio station uses a mark, such as call letters, to indicate the source of its broadcasting services generally.  On the other hand, if an applicant is using the name of a weekly comedy television show as a mark, "television broadcasting services" would not be appropriate because the mark does not serve to identify and distinguish the electrical transmission of the program.  Instead, the applicant should identify the services as "television entertainment services in the nature of an ongoing series of comedy programs" (Class 41).

Generally, the identification of a service should not emphasize the method or manner by which the service is provided.  However, in some circumstances, it may be helpful to include such information in a trailing phrase.

Example - "Accounting services" (Class 35) is an acceptable identification of services; thus, whether this type of service is rendered online or through other means need not be mentioned.

Example - "Dinner theaters" (Class 41) emphasizes the entertainment aspect associated with theater generally.  The fact that dinner is also served at the theater performance is ancillary to the primary service of presenting the theatrical production.

Fashion-show services are generally classified either as promotional services rendered by the organizer of the fashion show to the businesses or groups that sponsor the event or as an entertainment service.  When the record shows that the primary purpose of conducting such a fashion show is to promote the sale of goods or services of the sponsors, the service should be recited as "promoting the goods or services of others by means of a fashion show" or "fashion show exhibitions for commercial purposes" in Class 35.  Where the fashion show is presented primarily as entertainment for the general public, the service should be identified as "entertainment in the nature of fashion shows" in Class 41.

The activities recited in the identification must constitute services as contemplated by the Trademark Act.  See TMEP §§1301.01 et seq. as to what constitutes a registrable service.  For example, "sales" cannot be listed as the primary activity in an identification, because the sale of one’s own goods or services is not a registrable service.

See also TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.

1402.11(a)    Computer Services

1402.11(a)(i)    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:

  • "Internet advertising services in Class 35."
  • "Online banking services in Class 36."
  • "Online cosmetic skincare consultation services in Class 44."
  • "Internet-based dating, social introduction and social networking services in Class 45."

1402.11(a)(ii)    Content Providers

The term "content provider" is generally used to indicate a person or entity that provides information or entertainment content for use on the internet or electronic media. Content-provider services may be classified in a variety of classes depending upon the nature of the activity provided. Thus, the activity provided must be specified in the identification. As discussed below, the subject matter of the services may also be required for appropriate classification.

Information Provider Services

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 business information via a website in Class 35."
  • "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.  The website is the means and not itself a classifiable service.
  • "Providing real-time information concerning vehicle parking space availability, in Class 39."

Audiovisual Content

Content-provider services involving the provision of online, non-downloadable videos are classified in Class 41 regardless of the subject matter of the videos. The subject matter of the videos must also be included in the identification to assist in likelihood of confusion determinations under 15 U.S.C. §1052(d). For additional information on identifying and classifying computer entertainment services, see TMEP § 1402.11(a)(vii).

Other Services Offered by Content Providers

Businesses and individuals commonly provide content services in addition to other types of services. For example, Internet Service Providers (ISPs) often provide online content as well as Class 38 internet access services. For information about identifying telecommunications services provided by ISPs, see TMEP § 1402.11(a)(iii). Online audiovisual content providers may similarly offer both video-streaming services in Class 38 and online non-downloadable videos in Class 41. Content providers also may provide a variety of technological services, such as website hosting, in Class 42. Each service on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce should be set forth in the application. 15 U.S.C. §§1051(a)(2) and 1051(b)(2); 37 C.F.R. §2.32(a)(6). For multiple-class application requirements, see TMEP §1403.01.

1402.11(a)(iii)    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:

  • "Providing telecommunications connections to the Internet or databases, in Class 38."
  • "Electronic mail services, in International Class 38."
  • "Broadcasting of video and audio programs over the Internet, in Class 38."
  • "Webcasting services, in Class 38."
  • "Web conferencing services, 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. For information on identifying and classifying content-provider services, see TMEP § 1402.11(a)(ii).

1402.11(a)(iv)    Office-Function-Type and Computerized Web Traffic 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."
  • "Systemization of data in computer databases, in Class 35."

Computerized web services include website-focused activities the primary function of which is to promote, advertise or market the websites of others by improving a website’s visibility in search engine results.

  • "Website traffic optimization, in Class 35."
  • "Consulting services in the field of search engine optimization, in Class 35."
  • "Promoting the goods and services of others through search engine referral traffic analysis and reporting, in Class 35."

1402.11(a)(v)    Computer Installation and Repair Services

As set forth in the Nice Alphabetical List, installation, maintenance, and repair of computer hardware are in Class 37, while installation, maintenance, and updating of computer software are activities in Class 42. Therefore, for classification purposes, 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 networking hardware, the service should be classified in Class 37.  For example: 

"Installation, maintenance, and repair of Ethernet and wireless networking hardware, 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."

1402.11(a)(vi)    Computer Retail Services

Retail store, catalog, and ordering services are classified in Class 35 no matter how the services are conducted.  Any of the following identifications is acceptable: 

  • "Computerized online retail store services in the field of {indicate field of goods}, in Class 35."
  • "Computerized on-line ordering services in the field of {indicate field of goods}, in Class 35."
  • "Providing a website used to place online commercial orders in the field of {indicate field of goods}, in Class 35."

Other types of retail services, including marketing, advertising, and promotion, are also classified in Class 35 regardless of how the services are conducted. For example:

  • "Marketing, advertising, and promoting the retail goods and services of others through wireless electronic devices, in Class 35."

1402.11(a)(vii)    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 wording "providing a website featuring entertainment" is not acceptable.  Instead, one of the following may be 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 information:  "Providing information in the field of computer gaming entertainment via a website, in Class 41."  See TMEP §1402.11(b).

If the services involve providing non-downloadable videos: "Providing a website featuring non-downloadable videos in the field of {indicate field or subject matter of videos}, in Class 41."

If the services involve providing a website from which a user can receive "webcasted" transmissions over the Internet:  "Broadcasting {indicate radio programs, television programs, multimedia programs, 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."

1402.11(a)(viii)    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."

1402.11(a)(ix)    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.

1402.11(a)(x)    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 {indicate 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 like and have the attributes of 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.  See 37 C.F.R. §2.71(a).

1402.11(a)(xi)    Electronic Storage, Hosting of Data, and Cloud Computing

Electronic storage of data for others is considered a computer technology service as it requires the provision of technological means to conduct the activity and is classified in Class 42 as of the 10th edition, 2014 version of the Nice Classification system. Hosting of computer websites and other data, including software as a service, is also a computer technology service when conducted for third parties. The storage or hosting of one’s own data is not considered a service within the meaning of the Trademark Act. Some acceptable identifications are:

  • "Electronic data storage, in Class 42."
  • "Electronic storage of documents and archived e-mails, in Class 42."
  • "Hosting of digital content on the Internet, in Class 42."
  • "Website hosting services, in Class 42."

Cloud computing comprises a variety of Class 42 activities that must be further specified for purposes of examination on the basis of likelihood of confusion under §2(d), 15 U.S.C. §1052(d). Some acceptable identifications are:

  • "Computer services, namely cloud hosting provider services, in Class 42."
  • "Providing virtual computer systems and virtual computer environments through cloud computing, in Class 42."
  • "Cloud computing featuring software for use {specify function and, if content- or field-specific, the field of use}, in Class 42."

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 §1401.09(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.

Since information services must now be classified according to the 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, "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, to allow for proper classification of the activity.

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).

1402.11(c)    Association Services and "Promoting the Interest of" Services

The classification of services rendered by associations was affected by the reorganization of Class 42 (see TMEP §§1401.09 et seq.).  Prior to January 1, 2002, the Explanatory Notes regarding this topic for the old Class 42 included the language "services (not included in other classes) rendered by associations to their own members."  This language in the old Class 42 allowed identifications of services such as "association services, namely, promoting the interest of lawyers" to be accepted in Class 42.  Effective January 1, 2002, there is no reference to "services rendered by an association" in the Class Heading or Explanatory Notes for any of the service classes.

Most activities rendered by associations are easily classified in other classes, e.g., business services (Class 35), insurance services (Class 36), travel arrangements (Class 39), training and entertainment (Class 41).

Effective January 1, 2002, under U.S. identification policy, lobbying services and activities related or similar to lobbying activities provided by an association are classified in Class 35, because they further the business interests of the group represented by the association.  Even non-business interests such as those that promote reading skills or environmental protection have a "business interest" in promoting their concerns.

1402.11(d)    Charitable Services, Other than Monetary

Prior to January 1, 2002, non-monetary charitable services were classified in Class 42, regardless of the type of service being provided by the charity.  Effective January 1, 2002, services are classified by the nature of the service provided, e.g., "charitable services, namely, providing shelter for the homeless" are in Class 43, like other temporary accommodation services; "charitable services, namely, providing tutoring for underprivileged students" are classified in Class 41, like other educational services.  See TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.

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 subject matter of the service.  This includes technical consulting services.  Technical consulting is like any other consultation service, although it focuses primarily on how things work.  Thus, the type of consultation or subject matter of the consultation must be set forth with adequate specificity to allow for accurate classification.  It should be noted that "technology consulting" is in Class 42 because it encompasses consulting about the technology aspects of the subject matter given.

Some Acceptable Identifications:

  • "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."
  • "Consulting in the field of environmental protection, namely, detection of contaminants in water, in Class 42."
  • "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 consulting in the field of environmental science, in Class 42."

See TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.

1402.11(f)    Distribution of Videotapes, Audiotapes, Videodiscs, and Similar Items

The services of production and distribution of motion pictures and television programs are classified in Class 41.  This service involves the actual creation of the motion picture or television program and the accompanying activity of distributing it to movie theatres and television stations for display to the public.  In this service, the ownership of the physical product does not leave the producer.  The movie theatre or television stations "lease" (in a sense) the film or tape for a period of time and then return it to the producer.  This is not the case when distribution relates to videotapes, audiotapes, or other hard goods that result from the production of visual or audio entertainment.  When these goods are distributed, it is the same as the distribution of any other kind of hard goods by any other manufacturer.  The ownership of the physical product is transferred to the purchaser just as it is with clothing, toys, food products, or computers.  For this reason, the identification "distribution of videotapes, audiotapes, and videodiscs," should not be accepted as a service even when the distribution is linked to the production of these goods.  The production of the entertainment product is perfectly acceptable in Class 41; however, the distribution of the hard goods that result from that production is not a service in that class.  It is possible that such distribution could be considered a distributorship service in Class 35, but that must be determined on a case-by-case basis.  Distribution of one‘s own goods is not a service; it is merely a necessary part of doing business.  However, if the applicant distributes the videotapes, audiotapes, etc. of others as well as those it has produced, it may be identified as a distributorship service in Class 35.

See TMEP §§1301.01 et seq. regarding the criteria for determining whether an activity constitutes a service.

1402.11(g)      Recorded Entertainment Services

For entertainment services such as those rendered by a musical group, the performance must be live.  The recording of a live concert or studio performance is not considered a service of the performing group.  Similarly, performances for the sole purpose of recording are not considered services.  The production by another entity of a performance by a musical group for recordation would be a service, but an identification such as "live and recorded performances by a musical group" could not be accepted as a valid service identification unless the words "and recorded" were deleted.

Recorded entertainment usually takes the form of goods in Class 9, such as videotapes, audio cassettes, DVDs, CD-ROMs, etc.  This is consistent with the treatment of "distribution" of these products as goods and not services as discussed in §1402.11(f).

See TMEP §§1301.01 et seq. regarding the criteria for determining whether an activity constitutes a service.

1402.11(h)    Identification of "Bonus Programs"

Many businesses offer "bonus programs" or "frequent patron programs" to encourage patronage of that business.  However, promotion of one’s own goods or services is not considered a service under the Trademark Act since the beneficiary of such an activity is the business itself and not a third party.  See TMEP §1301.01(b)(i).  These special programs do confer some benefit to the customers who participate in the program, but this benefit flows directly from use of the trademark owner’s goods or services.  Thus, a frequent flyer program provided by an airline to encourage use of its own air transportation services would be identified as "air transportation services featuring a frequent flyer bonus program" and it would be classified in Class 39.  Similarly, a retail store that has a program through which patrons earn points that result in discounts on future purchases at that store would be identified as "retail store services in the field of {indicate field} featuring a frequent patron program in which points are accumulated to be used for discounts on future purchases."  This service would be in Class 35 because it is primarily a retail store service.  It should be noted that organizing and conducting a program of this type for a third party is a promotion/advertising service and would be classified in Class 35 and identified with language such as "promoting the goods and services of others by means of a point accumulation program with points used for discounts on future purchases of those goods and services" (or whatever the details of the program may be).

1402.11(i)    Marketing Services and Advertising Services

Effective January 1, 2012, "Marketing" was added to the Nice Alphabetical List. See TMEP §1401.11(e). As with "Advertising services," the entry is listed in the ID Manual as "Marketing services" to emphasize that the activity is a service (i.e., an activity done for the benefit of others) and to make clear that use of both terms is preferred.

However, if upon consideration of the entire application, including the specimen of use, other wording in the identification or other information in the application, the Examining Attorney determines that an applicant is actually promoting its own goods and/or services, a refusal may be issued on the basis that the record fails to identify a registrable service as contemplated by the Trademark Act. See TMEP §§904.07(b), 1301.01-1301.01(b)(v). Further, the unambiguous wording "marketing of {specify goods}" may not be clarified to identify only goods. For example, amendment of "marketing of shirts" to "shirts" would be beyond the scope of the original, acceptably definite identification.

1402.11(j)    Issuing Awards

Services that involve the issuance of awards are usually classified in Classes 35 and 41.  Classification depends upon the purpose of the award program.  If the award program is an employee incentive rewarding excellence in job-related performance that actually furthers the business of an employer (e.g., safety, quality, productivity, customer service), then the service is classified in Class 35.  If the award program is to recognize excellence or achievement that may or may not be related to the participants’ business or professional endeavors (e.g., achievements in community service, excellence in country music performance), then the service should be classified in Class 41.  The distinction is that Class 35 award programs do further the business interests of an employer by encouraging positive business-related performance, while Class 41 award programs reward excellence for endeavors that do not further the business interests of an employer.

1402.11(k)    Accreditation- and Certification-Related Services vs. Certification Marks

Service marks are used to identify and distinguish the services of one person from the services of others and to indicate the source of the services. 15 U.S.C. §1127. For information about what constitutes a service under the Trademark Act, see TMEP §1301.01─1301.01(b)(vi). Unlike service marks, certification marks are not used by their owners but instead are used by authorized producers of goods or services to indicate that the goods or services possess certain prescribed characteristics or meet certain standards established by the certification mark owner. See TMEP §1306.01─1306.06.

Accreditation and certification activities are not considered "services" under the Trademark Act or Nice Classification and should not be included in the identification of services for a service-mark application. However, activities underlying the accreditation or certification, such as testing goods/services to determine whether they conform to established accreditation/certification standards, may constitute services under the Trademark Act if they are performed for the benefit of others and meet the other criteria for activities that constitute services. See TMEP §§1301.01(a)─1301.01(a)(iii). The development, evaluation, or testing of accreditation or certification standards may also constitute services under the Trademark Act when those activities are performed for the benefit of or to the order and specification of others. See generally TMEP §1301.01.

Identifications for accreditation- or certification-related services should make clear the nature of the activities performed for the benefit of others. Therefore, examining attorneys must require clarification of an identification for accreditation- or certification-related services where the activity identified does not clearly constitute a service under the Trademark Act. For example, the identification "Accreditation services, namely, setting and providing standards for {indicate field or subject matter} for the purposes of accreditation" is indefinite because the activities may be performed by the accrediting body for its own benefit rather than by a third party for the benefit of the accrediting body. Thus, it is unclear whether the activities encompassed by the identification constitute services under the Trademark Act and clarification is required.

For information on identifying goods or services of authorized users in certification mark applications, see TMEP §1306.02(c).