1902.02(g)    Classification in International Applications

The goods/services should be classified according to the version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement) that is in effect as of the filing date of the international application.  37 C.F.R. §7.11(a)(7).  Both the prepopulated and the free-text TEAS forms will allow an applicant to change the classification of goods/services in an international application.

The MPU does not certify classification of the goods/services in an international application.  Therefore, the owner of the U. S. application or registration need not classify the goods/services in the international application in the same class(es) in which they are classified in the U. S. basic application and/or registration.  However, failure to properly classify goods or services in an international application according to the international classification system will result in issuance of a notice of irregularity from the IB.  Because the final decision on the classification of the goods/services in an international application rests with the IB, the USPTO will not reclassify goods/services nor will USPTO employees give legal advice in response to specific inquiries regarding the reclassification of particular goods/services.  The IB provides guidance on its website, at https://www.wipo.int/classifications/nice/en/.  See TMEP §§1401.02–1401.02(c) for further information about international classes, and §§1902.07–1907.02(f) for further information about irregularities in the international application.

1902.02(g)(i)    Reclassifying Goods/Services

If the goods or services in the basic application and/or registration are classified under the old U.S. classification system ( see TMEP §1401.02), it is advisable to reclassify the goods/services into international classes in the international application, to avoid issuance of a notice of irregularity by the IB.  Applicants using the prepopulated TEAS form must reclassify such goods/services into international classes because the form does not recognize U.S. class designations.

See TMEP §1902.02(g)(ii) regarding reclassification of goods/services in U.S. Classes A, B, or 200.

It is also advisable to reclassify the goods when the identification of goods in the basic application and/or registration comprises kits or gift baskets.  See TMEP §1902.02(g)(iii) for further information.

The IB provides a database of properly classified terms, the Madrid Goods and Services Manager (MGSM), on the WIPO's website at https://www.wipo.int. Applicants may refer to the MGSM to review the classification assigned by the IB to more than 40,000 goods and services as well as the translation of such goods/services into several languages.

1902.02(g)(ii)    U. S. Classes A, B, and 200

U.S. Classes A, B, and 200 are classes from the old U.S. classification system that are still used in the United States to classify certification marks for goods (U.S. Class A), certification marks for services (U.S. Class B), and collective membership marks (U.S. Class 200).  These classes are not included in the international classes under the Nice Agreement.  Therefore, an international application based on a U.S. application or registration in U.S. Classes A, B, or 200 should be reclassified in the proper international class based on the nature of the goods or services being certified or the area of activity of the members of the collective.  If the applicant does not reclassify its goods or services into the proper international class, the IB will issue a notice of irregularity.

Amendment of the classification in the corresponding basic U.S. application and/or registration is not permitted.

U. S. Classes A and B

It has been the longstanding practice in the United States to accept identifications of goods or services for U.S. Classes A, B, and 200 that are broader than those that would be accepted in applications for goods/services in other classes.  See TMEP §§1304.02(c), 1306.02(c).  In many situations, it will be difficult to reclassify these broad identifications into appropriate international classes.  For example, a goods certification mark in U.S. Class A for "remanufactured, refurbished and reconditioned electrical equipment" could include goods in International Classes 7, 9, and/or 11, and possibly others.  In such situations, the U.S. applicant should specify the type of electrical equipment that is being certified, and either apply and pay the fees for all appropriate classes, or limit the specification of "electric equipment" to cover goods in one class only.

In some certification mark applications/registrations, the goods/services will be easily classified in one class of the international classification system.  For example, a services certification mark for "scientific laboratory services" would be classified in International Class 42.  However, it is important to be aware that multiple classes may be required when reclassifying goods/services from U.S. Classes A and B.

U. S. Class 200

U.S. Class 200 presents a similar problem and a similar solution.  A broad identification of the subject organization in a collective membership mark application or registration is difficult to reclassify.  For example, the wording "indicating membership in a conservative youth organization" is too broad and vague for classification in an international class.  On the other hand, "indicating membership in an organization of consulting communications engineers" is easily classified in International Class 42.  As with the certification marks, an applicant may have to clarify, specify, or narrow the description of the organization in the international application in order to classify the organization in an international class.

1902.02(g)(iii)    Kits and Gift Baskets

The USPTO policy regarding the identification and classification of kits and gift baskets differs from the policy of the IB regarding the classification of these goods.

The USPTO permits registration of a kit or gift basket in a single international class, even if the identification of goods lists items that are classified in other classes.  The IB and most foreign countries will not accept an identification of goods in a particular class that includes a reference to goods that are classified in other classes.  If an international application includes kits and/or gift baskets, and the identification of goods refers to items classified in more than one class, the IB is likely to issue a notice of irregularity requiring the applicant to separate the goods into their respective classes and to pay additional fees for added classes.  To avoid issuance of a notice of irregularity by the IB, an international applicant may wish to either narrow the identification to refer only to items in a single international class, or submit additional fees for multiple international classes.