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."