1401.14 General Summary of Major Changes in Practice Based on the 11th Edition of the Nice Agreement
The 11th edition of the Nice Classification went into effect January 1, 2017. The requirements of the 11th edition apply only to applications filed on or after January 1, 2017. Any changes under subsequent versions or editions of the Nice Classification supersede the 11th edition to the extent any inconsistency exists. Several changes to identification and/or classification policy in compliance with the 11th edition are discussed below.
1401.14(a) Cosmetic and Toiletry Preparations and Soaps
Under the 11th edition of the Nice Classification, cosmetics, toiletry preparations, and soap are classified in Class 3, except when those goods are medicated, are for pharmaceutical purposes, or have antibacterial or disinfectant properties. In such cases, the goods are classified in Class 5. Under the 11th edition, "medicated soap" and "disinfectant soap" were transferred from Class 3 to Class 5. "Antibacterial soap," "medicated toiletry preparations," and "medicated shampoos" were added to the Alphabetical List in Class 5. Consequently, if an identification for soaps does not specify that the soaps are antibacterial, disinfectant, or medicated, the soaps are generally classified in Class 3. Similarly, if an identification for cosmetics or toiletry preparations does not specify that the cosmetics or toiletry preparations are medicated or for pharmaceutical purposes, it is generally presumed that the goods are non-medicated and classified in Class 3.
1401.14(b) Household or Kitchen Serving Utensils and Small Hand-operated Kitchen Apparatus for Mincing, Grinding, Pressing, or Crushing
Under the 11th edition of the Nice Classification, household or kitchen serving utensils, except for "serving knives," are classified in Class 21. "Serving knives" are classified with all other knives in Class 8 under the Class Heading "cutlery." The following are examples of serving utensils that are classified in Class 21: "sugar tongs," "ice tongs," "ice cream scoops," and "ladles for serving wine."
In addition, under the 11th edition, small hand-operated kitchen apparatus for mincing, grinding, pressing, or crushing are classified in Class 21. For example, the following small hand-operated kitchen apparatus are acceptable in Class 21: "non-electric mincers," "hand-operated coffee grinders," "garlic presses," "nutcrackers," and "mortars and pestles for kitchen use."
1401.14(c) Dietetic Food and Beverages Adapted for Medical or Veterinary Use
Under both the 10th (effective January 1, 2012) and 11th (effective January 1, 2017) editions of the Nice Classification, identifications for dietetic foods and dietetic beverages in Class 5 must indicate that the goods are "adapted for medical use" or "adapted for veterinary use" (or include other language indicating that these items are adapted for a particular medical or veterinary use) to make clear that their purpose and use are not as part of a regular diet for human beings or animals.
Under the 10th edition, identifications for dietetic food and dietetic beverages adapted for medical or veterinary use in Class 5 were required to indicate the specific dietetic food, or dietetic beverage item. See TMEP §1401.13(d). However, under the 11th edition, it is no longer a requirement that the particular dietetic food or dietetic beverage item adapted for medical or veterinary use be indicated. For example, "dietetic foods adapted for medical purposes" and "dietetic beverages adapted for medical purposes" are acceptable identifications in Class 5 under the 11th edition. For information about the effective date to ID Manual changes, see TMEP §1401.10.
1401.14(d) Nut and Plant Milks; Milk Substitutes
Under the 10th edition of the Nice Classification, nut or plant milks were generally classified according to their purpose. If the goods were used as milk substitutes or used for culinary purposes, the goods were classified in Class 29. If the goods were used as beverages, other than milk substitutes, they were classified in Class 32.
Under the 11th edition of the Nice Classification, goods identified as "milk" or "milk-based beverages" must be classified in Class 29. The identification may indicate that the milk is used as a beverage or used for culinary purposes, but it is not required. For example, "almond milk," "almond milk-based beverages," and "almond milk for culinary purposes" are all acceptable in Class 29.
"Milk substitutes" was added to the Nice Alphabetical List in Class 29 under NCL 11-2017. Milk substitutes are replacements for animal milk and include, for example, "coconut milk" and "oat milk." "Milk substitutes" is an acceptable identification without further specification. The identification may indicate the particular type of milk substitute, but it is not required.
1401.14(e) Security Services in Class 42 and Class 45
Under the 11th edition of the Nice Classification, the Committee of Experts inserted new wording "computer and technology services for securing computer data and personal and financial information and for the detection of unauthorized access to data and information" into the Class 42 Explanatory Note and changed the Class 45 Heading to "Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals." (Emphasis added. The wording "personal and social services rendered by others to meet the needs of individuals" was subsequently replaced under the 12th edition of the Nice Classification, effective January 1, 2023, with "dating services, online social networking services; funerary services; babysitting." The Explanatory Note for Cl. 45 was modified to indicate that Class 45 includes "certain personal and social services rendered by others to meet the needs of individuals.") This change distinguishes between computer and technology services for securing computer data or personal and financial information and detecting unauthorized access in Class 42 and physical security services for protecting tangible property and individuals in Class 45.
These additions and modifications resolve ambiguity under Nice 10-2016 resulting from the co-existence in the Nice Alphabetical List of "computer security consultancy" in Class 42 and "security consultancy" in Class 45. Under the 11th edition, the Nice Alphabetical List entry "security consultancy" in Class 45 was amended to "physical security consultancy."
Examples of "computer and technology services for securing computer data and personal and financial information and for the detection of unauthorized access to data and information" in Class 42 are "data encryption services," "electronic monitoring of personally identifying information to detect identity theft via the internet," and "monitoring of computer systems for detecting unauthorized access or data breach."
Examples of "security services for the physical protection of tangible property and individuals" in Class 45 are "personal body guarding" and "monitoring of burglar and security alarms." Although the burglar and security-alarm monitoring activity could be rendered by computerized or electronic means, it is considered a surveillance service relating to the physical safety of persons and security of tangible property in Class 45.
1401.14(f) Ivory, Bone, Whalebone, Horn, Tusks, or Other Items Prohibited under Federal Law
Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark. Thus, the goods or services to which the mark is applied must comply with all applicable federal laws. TMEP §907. Identifications that include "ivory," "bone," "whalebone," "horn," or "tusks" may necessitate an inquiry regarding lawful use in commerce in connection with, for example, the Endangered Species Act (ESA), 16 U.S.C. §§1531-1544, the African Elephant Conservation Act, 16 U.S.C. §§ 4201-4246, and/or the Marine Mammal Protection Act (MMPA), 16 U.S.C. §§1361-1407. Accordingly, ID Manual entries related to "ivory," "bone," "whalebone," "horn," and "tusks" were deleted effective January 1, 2017. Additional entries, including "live coral," "ambergris," "whale oil and fat for food," and "live soft-shelled turtles," were subsequently deleted from the ID Manual because the identifications may necessitate an inquiry regarding lawful use in commerce. For additional information regarding lawful use in commerce, see TMEP §907. For information regarding effective date changes to the ID Manual, see TMEP §1401.10.