1401.05 Criteria on Which International Classification Is Based
The General Remarks of the Nice Classification set forth general criteria for placing goods or services in the international classes. See TMEP §1401.02(a).
The Class Headings of the Nice Classification indicate the type of goods or services appropriate to each class. Id. The Explanatory Notes at the end of most class headings of goods or services explain the principles and differentiating lines on which the international classes are based.
The Alphabetical List of the Nice Classification contains information about the appropriate class for particular products and services. See TMEP §1401.02(c).
1401.05(a) Identification and Classification of Kits, Gift Baskets, and Items Sold as a Unit
The USPTO permits registration of a kit or gift basket in a single international class, even if the identification of goods includes components that are classified in other classes. This practice is not recognized by the Nice Classification and is not followed by the International Bureau of WIPO nor by most other national trademark offices. See TMEP §1902.02(g)(iii) regarding identification of kits and gift baskets in applications for international registration.
Although certain types of kits are deemed acceptable for identification and classification purposes without listing the individual components (e.g., face painting kits and teeth whitening kits in Class 3, and first aid kits and ovulation test kits in Class 5), in general, the identification must indicate the type of kit and its principal components. Kits that are deemed acceptable for identification and classification purposes without listing the individual components are included in the ID Manual and are generally classified according to purpose; other kits are classified on a case-by-case basis using the classification principles set forth below.
Generally, kits are identified and classified in two ways:
- (1) If the kit is for the purpose of making a single object, it would be classified by the item it is intended to make. For example, kits for making wine consisting of fresh grapes and chemicals for fermenting wine would be classified in Class 33, the class for wine, even though the individual components would be classified in other classes (e.g., fresh grapes in Class 29 and chemicals for fermenting wine in Class 1).
- (2) If the kit is a combination of a number of components around a theme (e.g., nail care kits), the class that includes the majority of individual components in the kit generally controls the classification for the entire kit. Thus, a nail care kit comprised of nail polish (Class 3), nail files (Class 8), nail polish remover (Class 3), an instruction manual (Class 16), and false nails (Class 3) is classified in Class 3, which is the class of the majority of individual components in the kit. However, the identification must be modified to list all of the components in Class 3 at the beginning of the list of components. In such cases, the identification must indicate the type of kit and list the components, with all of the items in the predominant class listed first. Components that are secondary should be set forth after the primary components.
Example – "Nail care kits comprised primarily of nail polish, nail polish remover, and false nails and also including nail files and printed instructions" is acceptable in Class 3, the class of the primary components which are listed first in the list of kit components.
Example – "Nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions" is acceptable in Class 3, the class of the primary components which are listed first in the list of kit components.
Example – "Nail care kits comprised of nail polish, nail files, nail polish remover, an instruction manual, and false nails" is properly classified in Class 3, but is not acceptably worded because the predominant components in Class 3 (i.e., nail polish, nail polish remover, and false nails) are not all listed first in the list of kit components.
If the goods are kits around a particular theme, but the majority of components are secondary components, the identification should indicate that the kits are comprised "primarily" of specific components in a particular class and subsequently indicate that the kits are "also consisting of" the secondary items. The secondary components may be in a different class or classes from the primary component(s). In that case, the kits are classified in the class of the primary components, even if the primary components are not the majority of components in the kits.
Example – "Nail care kits comprised primarily of nail polish and also including nail files and printed instructions" is acceptable in Class 3, because nail polish is clearly indicated as the primary component and appears first in the list of kit components.
If the individual components of the kit do not appear to have a predominant class (e.g., the kit contains two or three components, each in a different class), the applicant may elect which class(es) the kit should be in, but the identification must still list all of the goods that control the class first in the list of kit components.
Example – "Tool kits comprising hand saws and power-driven saws" is acceptable in Class 8 because there is no predominant class for the components in the kit and "hand saws," which are listed first in the list of components, are classified in Class 8.
Example – "Tool kits comprising power-operated saws and hand saws" is acceptable in Class 7 because there is no predominant class for the components in the kit and "power-operated saws," which are listed first in the list of components, are classified in Class 7.
Example – "Tool kits comprising carpenter’s levels, hand saws, power-driven saws, and carpenters’ rules" is not acceptable in Class 9 because the components in Class 9 are not all listed first in the list of components. The components appropriate to Class 9, carpenter’s levels and carpenters’ rules, must all be listed first in the list of components for an acceptable identification in Class 9.
Classification of multi-component kits that have no predominant components is determined by the first listed component. Rearranging the order of the components listed will impact the classification of kits with no predominant components, with the class of the first-listed component dictating the appropriate class for the kits.
Example – "Tool kits comprising carpenter’s levels, hand saws, and power-driven saws" is acceptable in Class 9 because there is no predominant class for the kit components and "carpenter’s levels," which are listed first in the list of components, are classified in Class 9.
Example - "Tool kits comprising hand saws, power-driven saws, and carpenter’s levels" is acceptable in Class 8 because there is no predominant class for the kit components and "hand saws," which are listed first in the list of components, are classified in Class 8.
Example - "Tool kits comprising power-driven saws, carpenter’s levels, and hand saws" is acceptable in Class 7 because there is no predominant class for the kit components and "power-driven saws," which are listed first in the list of components, are classified in Class 7.
The same criteria are applied to the classification of gift baskets.
Similarly, a product may comprise items that are sold as a unit and that, if sold separately, would be classified in different classes. The identification in such cases should include wording to indicate that the goods are "sold as a unit." All of the predominant elements should be listed first and the collection of items sold as a unit will be classified accordingly.
Example - Computer software is classified in Class 9. Instructional manuals are classified in Class 16. The item "Computer software for the creation of firewalls and instructional manuals related thereto, sold as a unit" would be classified in Class 9. "Instructional manuals for the creation of firewalls and computer software relating thereto, sold as a unit" would be classified in Class 16.
1401.05(b) Medical vs. Non-Medical Goods
It is sometimes difficult to determine whether certain pieces of apparatus are classified in Class 9 or Class 10. While photographic, optical, measuring, testing, and scientific research apparatus are generally classified in Class 9, surgical, medical, dental, or veterinary apparatus used for the diagnosis, treatment, or improvement of function or condition of persons or animals are generally classified in Class 10. Certain goods could be classified in both classes, with appropriate wording, depending upon their use. For example, thermometers are commonly used for both medical and non-medical purposes. Thermometers for medical use are in Class 10 because they function as medical instruments, while thermometers other than for medical use, such as meat thermometers, are in Class 9 because they function as measuring apparatus. While both items measure temperature, they are usually very different in nature and classified in different classes based on their specific uses.
Goods should be specified as being for surgical, medical, dental, or veterinary use when the items could be in a class other than Class 10 when not for surgical, medical, dental, or veterinary use. When goods, like thermometers, are commonly used for both surgical, medical, dental, or veterinary use and non-surgical, medical, dental or veterinary use, it is sufficient to indicate that the goods are "for medical use" or "not for medical use," as appropriate, to justify the classification. The mere addition of "for medical use" to an identification is not sufficient to justify classification of items in Class 10 if the goods are not directly used for the diagnosis, treatment, or improvement of function or condition of persons or animals.
If an item is normally not classified in Class 10, it is not necessary to specify that it is not for surgical, medical, dental, or veterinary use when it is classified in its normal class. However, to justify classification of goods not commonly used for surgical, medical, dental, or veterinary use in Class 10, the identification must indicate the particular surgical, medical, dental, or veterinary use of the goods in diagnosing, treating, or improving the function or condition of persons or animals.
Items specially adapted for use by people with disabilities are also classified in Class 10. The identification must indicate that the goods are "specially adapted" for that particular purpose to justify the classification in Class 10. For example, while "toilets" (without any further specification) are in Class 11, "toilets adapted for medical patients or for use by disabled persons" are in Class 10.
1401.05(c) Classification and Plurality of Uses
A product that has a plurality of uses or aspects is ordinarily classified in a single class. Ex parte Schatz, 87 USPQ 374 (Comm’r Pats. 1950). However, if it can be shown that a product has a plurality of uses or aspects so that two or more classes apply, multiple classification may be permissible. If a product is normally classified in a particular class, an applicant cannot obtain registration in another class merely by identifying an ultimate use of the product in goods that fall in the other class.
Example - Essential oils are classified in Class 3. This item cannot be classified in Class 1 with an indication that it is used in the manufacture of other finished products. Raw or unfinished materials that are used in the manufacture of other finished products may be classified in Class 1. However, an item like essential oils, which is always classified in Class 3 regardless of its ultimate use, cannot be transferred to Class 1 by adding Class 1 qualifying language.
When classification in multiple classes is appropriate, the identification must clearly indicate the basis for multiple classifications with language that is appropriate for the respective classes. Identical language cannot be used. For example, the USPTO will not accept the identification "clock radios," because it is unclear what the goods are and in which class the goods fall - Class 9 for radios or Class 14 for clocks. However, the applicant may adopt either or both of the following identifications - "radios incorporating clocks" in Class 9 or "clocks incorporating radios" in Class 14.
Certain services may also be classified in multiple classes on the basis of the purpose for which the service activity is rendered. While services are in principle classified according to the branches of activities specified in the headings of the service classes and in their Explanatory Notes, if an activity is not specified by any class heading, the purpose may determine classification.
Example – Layout services are classified in Class 35 when specified to be "for advertising purposes" and are classified in Class 41 when specified to be "other than for advertising purposes."
In an application under §1 of the Trademark Act, the specimen(s) should reflect acceptable use of the mark for each of the specified classes and the record must not indicate that the product has only one use or aspect. See The Procter & Gamble Co. v. Economics Laboratory, Inc. modified without opinion, 495 F.2d 1360, 181 USPQ 722 (C.C.P.A. 1974); In re International Salt Co., 166 USPQ 215 (TTAB 1970) ; Mead Johnson Co. v. Watson, 112 USPQ 284 (D.D.C. 1957) , aff’d 253 F.2d 862, 117 USPQ 13 (D.C. Cir. 1958).
Where a single specimen supports multiple classes, the examining attorney need not require multiple copies of the specimen. See TMEP §904.01.
Where a single product or service is classified in more than one class, the applicant must also comply with all other requirements for multiple-class applications. See TMEP §1403.01.
1401.05(d) Identification and Classification of "Systems"
In general, the USPTO will not accept identifications of goods described as "systems" because the terminology is considered indefinite. See TMEP §§1402.01, 1402.01(a). If the applicant submits an indefinite identification of goods described as "systems" (e.g., lawn-care systems), the examining attorney must require an amendment to the identification. The amended identification must specify the nature, purpose, or use of the system and its primary parts or components. The primary parts or components should be specified first in the list of the system’s parts or components. The system is classified in the same class as the primary parts or components. For example, lawn-care systems comprised of lawn mowers and herbicides are in Class 7, which is the same class as the lawn mowers; lawn-care systems comprised of herbicides, pesticides, and lawn sprinklers are in Class 5, which is the same class as the herbicides and pesticides.
Although USPTO policy generally requires further specificity of "systems," the USPTO may accept this wording when the identification is a generic term for a particular category of goods classified in a single international class. For example, "brake systems for vehicles" is an acceptable identification in Class 12 because it is a generic term for a combination of goods functioning as a unit to brake the vehicle. The ID Manual also lists additional acceptable wording for specific types of systems.
1401.05(e) Identification and Classification of "Food Additives"
Under the 10th edition of the Nice Agreement, identifications of goods in the nature of food additives must indicate the generic name of the product (e.g., lecithin, glucose, or pectin) as well as the purpose of the food additive. See TMEP §1401.11(c) for further explanation.
Proper classification may be based on purpose (e.g., industrial purpose as a raw ingredient for manufacturing food, medical purpose as a dietary supplement, or culinary purpose). In the case of food additives for culinary purposes, the particular characteristics of the substance(s) may affect classification. For example, "lecithin for culinary purposes" is classified in Class 29 because lecithin is a fat-like substance found in the cell membranes of plants and animals, and "edible oils and fats" are in the Class 29 class heading. "Glucose for culinary purposes," however, is classified in Class 30 because glucose is a sugar-like substance, and "sugar" is in the Class 30 class heading.