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Trademark Manual of Examining Procedure
April 2014
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1400>  1401  

1401    Classification

1401.01     Statutory Authority

Section 30 of the Trademark Act, 15 U.S.C. §1112, provides authority for establishing a classification system.  That section states, in part, as follows:

The Director may establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights.

1401.02   International Trademark Classification Adopted

As of September 1, 1973, the international classification of goods and services is the controlling classification used by the United States, and it applies to all applications filed on or after September 1, 1973, and their resulting registrations, for all statutory purposes.  See 37 C.F.R. §2.85(a).  Unless otherwise indicated, references in this manual to class refer to the international class.

Prior to September 1, 1973, the United States used its own classification of goods and services, which is different from the international classification.  The prior United States classification continues to govern for all statutory purposes for trademark applications filed on or before August 31, 1973, and all registrations issued on the basis of an application filed on or before August 31, 1973, unless the owner of the registration amends the registration to adopt international classification.  37 C.F.R. §2.85(b).

If a registration issued under the United States classification system, the owner of the registration may voluntarily amend to reclassify under the international classification system, pursuant to §7(e) of the Trademark Act, 15 U.S.C. §1057(e), if the owner pays the required fee.  37 C.F.R. §§2.6 and 2.85(e)(3).  See TMEP §1609.04.  

Classification schedules are set forth in Part 6 of the Trademark Rules of Practice.  See 37 C.F.R. §6.1 for the international classification schedule for goods and services, 37 C.F.R. §6.2 for the prior United States classification schedule for goods and services, 37 C.F.R. §6.3 for certification marks, and 37 C.F.R. §6.4 for collective membership marks.

1401.02(a)   Headings of International Trademark Classes

International trademark classification, and the headings of the international trademark classes, are established by the Committee of Experts of the Nice Union and set forth in the International Classification of Goods and Services for the Purposes of the Registration of Marks (10th ed. 2011), published by the World Intellectual Property Organization (“WIPO”).  See TMEP §1401.02(c) for further information.

The general remarks, class numbers, class headings, and explanatory notes for each international trademark class are as follows.  (The word or words in parentheses following the class numbers are short titles for the classes that are used exclusively in the United States Patent and Trademark Office (“USPTO”) and are not part of the official text of the Nice Union classes.  See TMEP §1401.02(b).

GENERAL REMARKS

The indications of goods or services appearing in the class headings are general indications relating to the fields to which, in principle, the goods or services belong.  The Alphabetical List should therefore be consulted in order to ascertain the exact classification of each individual product or service.

Goods

If a product cannot be classified with the aid of the List of Classes, the Explanatory Notes and the Alphabetical List, the following remarks set forth the criteria to be applied:

  • (a) A finished product is in principle classified according to its function or purpose.  If the function or purpose of a finished product is not mentioned in any class heading, the finished product is classified by analogy with other comparable finished products, indicated in the Alphabetical List.  If none is found, other subsidiary criteria, such as that of the material of which the product is made or its mode of operation, are applied.
  • (b) A finished product which is a multipurpose composite object (e.g., clocks incorporating radios) may be classified in all classes that correspond to any of its functions or intended purposes.  If those functions or purposes are not mentioned in any class heading, other criteria, indicated under (a), above, are to be applied.
  • (c) Raw materials, unworked or semi-worked, are in principle classified according to the material of which they consist.
  • (d) Goods intended to form part of another product are in principle classified in the same class as that product only in cases where the same type of goods cannot normally be used for another purpose.  In all other cases, the criterion indicated under (a), above, applies.
  • (e) When a product, whether finished or not, is classified according to the material of which it is made, and it is made of different materials, the product is in principle classified according to the material which predominates.
  • (f) Cases adapted to the product they are intended to contain are in principle classified in the same class as the product.

Services

If a service cannot be classified with the aid of the List of Classes, the Explanatory Notes and the Alphabetical List, the following remarks set forth the criteria to be applied:

  • (a) Services are in principle classified according to the branches of activities specified in the headings of the service classes and in their Explanatory Notes or, if not specified, by analogy with other comparable services indicated in the Alphabetical List.
  • (b) Rental services are in principle classified in the same classes as the services provided by means of the rented objects (e.g., Rental of telephones, covered by Cl. 38). Leasing services are analogous to rental services and therefore should be classified in the same way. However, hire or lease-purchase financing is classified in Class 36 as a financial service.
  • (c) Services that provide advice, information or consultation are in principle classified in the same classes as the services that correspond to the subject matter of the advice, information or consultation, e.g., transportation consultancy (Cl. 39), business management consultancy (Cl. 35), financial consultancy (Cl. 36), beauty consultancy (Cl. 44).  The rendering of the advice, information or consultancy by electronic means (e.g., telephone, computer) does not affect the classification of these services.
  • (d) Services rendered in the framework of franchising are in principle classified in the same class as the particular services provided by the franchisor (e.g., business advice relating to franchising (Class 35), financing services relating to franchising (Class 36), legal services relating to franchising (Class 45)).

GOODS

CLASS 1

(Chemicals)

Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Explanatory Note

Class 1 includes mainly chemical products used in industry, science and agriculture, including those which go to the making of products belonging to other classes.

This Class includes, in particular:

  • compost;
  • salt for preserving other than for foodstuffs;
  • certain additives for the food industry (consult the Alphabetical List of Goods).

This Class does not include, in particular:

  • raw natural resins (Cl. 2);
  • chemical products for use in medical science (Cl. 5);
  • fungicides, herbicides and preparations for destroying vermin (Cl. 5);
  • adhesives for stationery or household purposes (Cl. 16);
  • salt for preserving foodstuffs (Cl. 30);
  • straw mulch (Cl. 31).

CLASS 2

(Paints)

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Explanatory Note

Class 2 includes mainly paints, colorants and preparations used for the protection against corrosion.

This Class includes, in particular:

  • paints, varnishes and lacquers for industry, handicrafts and arts;
  • dyestuffs for clothing;
  • colorants for foodstuffs and beverages.

This Class does not include, in particular:

  • unprocessed artificial resins (Cl. 1);
  • laundry blueing (Cl. 3);
  • cosmetic dyes (Cl. 3);
  • paint boxes (articles for use in school) (Cl. 16);
  • insulating paints and varnishes (Cl. 17).

CLASS 3

(Cosmetics and cleaning preparations)

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Explanatory Note

Class 3 includes mainly cleaning preparations and toilet preparations.

This Class includes, in particular:

  • deodorants for human beings or for animals;
  • room fragrancing preparations;
  • sanitary preparations being toiletries.

This Class does not include, in particular:

  • chemical chimney cleaners (Cl. 1);
  • degreasing preparations for use in manufacturing processes (Cl. 1);
  • deodorants other than for human beings or for animals (Cl. 5);
  • sharpening stones and grindstones (hand tools) (Cl. 8).

CLASS 4

(Lubricants and fuels)

Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

Explanatory Note

Class 4 includes mainly industrial oils and greases, fuels and illuminants.

This Class does not include, in particular:

  • certain special industrial oils and greases (consult the Alphabetical List of Goods).

CLASS 5

(Pharmaceuticals)

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Explanatory Note

Class 5 includes mainly pharmaceuticals and other preparations for medical or veterinary purposes.

This Class includes, in particular:

  • sanitary preparations for personal hygiene, other than toiletries;
  • deodorants other than for human beings or for animals;
  • dietary supplements, intended to supplement a normal diet or to have health benefits;
  • meal replacements, dietetic food and beverages, adapted for medical or veterinary use;
  • cigarettes without tobacco, for medical purposes.

This Class does not include, in particular:

  • sanitary preparations being toiletries (Cl. 3);
  • deodorants for human beings or for animals (Cl. 3);
  • supportive bandages (Cl. 10);
  • meal replacements, dietetic food and beverages not for medical or veterinary purposes (Cl. 29, 30, 31, 32 or 33).

CLASS 6

(Metal goods)

Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Explanatory Note

Class 6 includes mainly unwrought and partly wrought common metals as well as simple products made of them.

This Class does not include, in particular:

  • bauxite (Cl. 1);
  • mercury, antimony, alkaline and alkaline-earth metals (Cl. 1);
  • metals in foil and powder form for painters, decorators, printers and artists (Cl. 2).

CLASS 7

(Machinery)

Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.

Explanatory Note

Class 7 includes mainly machines, machine tools, motors and engines.

This Class includes, in particular:

  • parts of motors and engines (of all kinds);
  • electric cleaning machines and apparatus.

This Class does not include, in particular:

  • certain special machines and machine tools (consult the Alphabetical List of Goods);
  • hand tools and implements, hand-operated (Cl. 8);
  • motors and engines for land vehicles (Cl. 12).

CLASS 8

(Hand tools)

Hand tools and implements (hand-operated); cutlery; side arms; razors.

Explanatory Note

Class 8 includes mainly hand-operated implements used as tools in the respective professions.

This Class includes, in particular:

  • cutlery of precious metals;
  • electric razors and clippers (hand instruments).

This Class does not include, in particular:

  • certain special instruments (consult the Alphabetical List of Goods);
  • machine tools and implements driven by a motor (Cl. 7);
  • surgical cutlery (Cl. 10);
  • side arms being firearms (Cl. 13);
  • paper knives (Cl. 16);
  • fencing weapons (Cl. 28).

CLASS 9

(Electrical and scientific apparatus)

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Explanatory Note

This Class includes, in particular:

  • apparatus and instruments for scientific research in laboratories;
  • apparatus and instruments for controlling ships, such as apparatus and instruments for measuring and for transmitting orders;
  • protractors;
  • punched card office machines;
  • all computer programs and software regardless of recording media or means of dissemination, that is, software recorded on magnetic media or downloaded from a remote computer network.

This Class does not include, in particular:

  • the following electrical apparatus and instruments:
    • (a) electromechanical apparatus for the kitchen (grinders and mixers for foodstuffs, fruit presses, electrical coffee mills, etc.), and certain other apparatus and instruments driven by an electrical motor, all coming under Class 7;
    • (b) apparatus for pumping or dispensing fuels (Cl. 7);
    • (c) electric razors, clippers (hand instruments) and flat irons (Cl. 8);
    • (d) electrical apparatus for space heating or for the heating of liquids, for cooking, ventilating, etc. (Cl. 11);
    • (e) electric toothbrushes and combs (Cl. 21);
  • clocks and watches and other chronometric instruments (Cl. 14);
  • control clocks (Cl. 14);
  • amusement and game apparatus adapted for use with an external display screen or monitor (Cl. 28).

CLASS 10

(Medical apparatus)

Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

Explanatory Note

Class 10 includes mainly medical apparatus, instruments and articles.

This Class includes, in particular:

  • special furniture for medical use;
  • hygienic rubber articles (consult the Alphabetical List of Goods);
  • supportive bandages.

CLASS 11

(Environmental control apparatus)

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Explanatory Note

This Class includes, in particular:

  • air conditioning apparatus;
  • bedwarmers, hot water bottles, warming pans, electric or non-electric;
  • electrically heated cushions (pads) and blankets, not for medical purposes;
  • electric kettles;
  • electric cooking utensils.

This Class does not include, in particular:

  • steam producing apparatus (parts of machines) (Cl. 7);
  • electrically heated clothing (Cl. 9).

CLASS 12

(Vehicles)

Vehicles; apparatus for locomotion by land, air or water.

Explanatory Note

This Class includes, in particular:

  • motors and engines for land vehicles;
  • couplings and transmission components for land vehicles;
  • air cushion vehicles.

This Class does not include, in particular:

  • certain parts of vehicles (consult the Alphabetical List of Goods);
  • railway material of metal (Cl. 6);
  • motors, engines, couplings and transmission components other than for land vehicles (Cl. 7);
  • parts of motors and engines (of all kinds) (Cl. 7).

CLASS 13

(Firearms)

Firearms; ammunition and projectiles; explosives; fireworks.

Explanatory Note

Class 13 includes mainly firearms and pyrotechnical products.

This Class does not include, in particular:

  • matches (Cl. 34).

CLASS 14

(Jewelry)

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Explanatory Note

Class 14 includes mainly precious metals, goods in precious metals not included in other classes and, in general jewellery, clocks and watches.

This Class includes, in particular:

  • jewellery (i.e., imitation jewelry and jewelry of precious metal and stones);
  • cuff links, tie pins.

This Class does not include, in particular:

  • goods in precious metals classified according to their function or purpose, for example, metals in foil and powder form for painters, decorators, printers and artists (Cl. 2), amalgam of gold for dentists (Cl. 5), cutlery (Cl. 8), electric contacts (Cl. 9), pen nibs of gold (Cl. 16), teapots (Cl. 21), gold and silver embroidery (Cl. 26), cigar boxes (Cl. 34);
  • objects of art not of precious metals (classified according to the material of which they consist).

CLASS 15

(Musical Instruments)

Musical instruments.

Explanatory Note

This Class includes, in particular:

  • mechanical pianos and their accessories;
  • musical boxes;
  • electrical and electronic musical instruments.

This Class does not include, in particular:

  • apparatus for the recording, transmission, amplification and reproduction of sound (Cl. 9).

CLASS 16

(Paper goods and printed matter)

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Explanatory Note

Class 16 includes mainly paper, goods made from that material and office requisites.

This Class includes, in particular:

  • paper knives;
  • duplicators;
  • plastic sheets, sacks and bags for wrapping and packaging.

This Class does not include, in particular:

  • certain goods made of paper and cardboard (consult the Alphabetical List of Goods);
  • colours (Cl. 2);
  • hand tools for artists (for example, spatulas, sculptors’ chisels) (Cl. 8).

CLASS 17

(Rubber goods)

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Explanatory Note

Class 17 includes mainly electrical, thermal and acoustic insulating materials and plastics, being for use in manufacture in the form of sheets, blocks and rods.

This Class includes, in particular:

  • rubber material for recapping tyres;
  • padding and stuffing materials of rubber or plastics;
  • floating anti-pollution barriers.

CLASS 18

(Leather goods)

Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Explanatory Note

Class 18 includes mainly leather, leather imitations, travel goods not included in other classes and saddlery.

This Class does not include, in particular:

  • clothing, footwear, headgear (consult the Alphabetical List of Goods).

CLASS 19

(Nonmetallic building materials)

Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Explanatory Note

Class 19 includes mainly non-metallic building materials.

This Class includes, in particular:

  • semi-worked woods (for example, beams, planks, panels);
  • veneers;
  • building glass (for example, floor slabs, glass tiles);
  • glass granules for marking out roads;
  • letter boxes of masonry.

This Class does not include, in particular:

  • cement preservatives and cement-waterproofing preparations (Cl. 1);
  • fireproofing preparations (Cl. 1).

CLASS 20

(Furniture and articles not otherwise classified)

Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Explanatory Note

Class 20 includes mainly furniture and its parts and plastic goods, not included in other classes.

This Class includes, in particular:

  • metal furniture and furniture for camping;
  • bedding (for example, mattresses, spring mattresses, pillows);
  • looking glasses and furnishing or toilet mirrors;
  • registration number plates not of metal;
  • letter boxes not of metal or masonry.

This Class does not include, in particular:

  • certain special types of mirrors, classified according to their function or purpose (consult the Alphabetical List of Goods);
  • special furniture for laboratories (Cl. 9);
  • special furniture for medical use (Cl. 10);
  • bedding linen (Cl. 24);
  • eiderdowns (Cl. 24).

CLASS 21

(Housewares and glass)

Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Explanatory Note

Class 21 includes mainly small, hand-operated utensils and apparatus for household and kitchen use as well as toilet utensils, glassware and articles in porcelain.

This Class includes, in particular:

  • utensils and containers for household and kitchen use, for example, kitchen utensils, pails, pans of iron, of aluminum, of plastics or of other materials, small hand-operated apparatus for mincing, grinding, pressing, etc.;
  • electric combs;
  • electric toothbrushes;
  • dish stands and decanter stands.

This Class does not include, in particular:

  • certain goods made of glass, porcelain and earthenware (consult the Alphabetical List of Goods);
  • cleaning preparations, soaps, etc. (Cl. 3);
  • small apparatus for mincing, grinding, pressing, etc., driven by electricity (Cl. 7);
  • razors and shaving apparatus, clippers (hand instruments), metal implements and utensils for manicure and pedicure (Cl. 8);
  • cooking utensils, electric (Cl. 11);
  • toilet mirrors (Cl. 20).

CLASS 22

(Cordage and fibers)

Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Explanatory Note

Class 22 includes mainly rope and sail manufacture products, padding and stuffing materials and raw fibrous textile materials.

This Class includes, in particular:

  • cords and twines in natural or artificial textile fibres, paper or plastics.

This Class does not include, in particular:

  • certain nets, sacks and bags (consult the Alphabetical List of Goods);
  • strings for musical instruments (Cl. 15).

CLASS 23

(Yarns and threads)

Yarns and threads, for textile use.

CLASS 24

(Fabrics)

Textiles and textile goods, not included in other classes; bed covers; table covers.

Explanatory Note

Class 24 includes mainly textiles (piece goods) and textile covers for household use.

This Class includes, in particular:

  • bedding linen of paper.

This Class does not include, in particular:

  • certain special textiles (consult the Alphabetical List of Goods);
  • electrically heated blankets, for medical purposes (Cl. 10) and not for medical purposes (Cl. 11);
  • table linen of paper (Cl. 16);
  • horse blankets (Cl. 18).

CLASS 25

(Clothing)

Clothing, footwear, headgear.

Explanatory Note

This Class does not include, in particular:

  • certain clothing and footwear for special use (consult the Alphabetical List of Goods).

CLASS 26

(Fancy goods)

Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Explanatory Note

Class 26 includes mainly dressmakers’ articles.

This Class includes, in particular:

  • slide fasteners.

This Class does not include, in particular:

  • certain special types of hooks (consult the Alphabetical List of Goods);
  • certain special types of needles (consult the Alphabetical List of Goods);
  • yarns and threads for textile use (Cl. 23).

CLASS 27

(Floor coverings)

Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Explanatory Note

Class 27 includes mainly products intended to be added as furnishings to previously constructed floors and walls.

This Class does not include, in particular:

  • wooden flooring (Cl. 19)

CLASS 28

(Toys and sporting goods)

Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Explanatory Note

This Class includes, in particular:

  • amusement and game apparatus adapted for use with an external display screen or monitor;
  • fishing tackle;
  • equipment for various sports and games.

This Class does not include, in particular:

  • Christmas tree candles (Cl. 4);
  • diving equipment (Cl. 9);
  • electrical lamps (garlands) for Christmas trees (Cl. 11);
  • fishing nets (Cl. 22);
  • clothing for gymnastics and sports (Cl. 25);
  • confectionery and chocolate decorations for Christmas trees (Cl. 30).

CLASS 29

(Meats and processed foods)

Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

Explanatory Note

Class 29 includes mainly foodstuffs of animal origin as well as vegetables and other horticultural comestible products which are prepared for consumption or conservation.

This Class includes, in particular:

  • milk beverages (milk predominating).

This Class does not include, in particular:

  • certain foodstuffs of plant origin (consult the Alphabetical List of Goods);
  • baby food (Cl. 5);
  • dietetic food and substances adapted for medical use (Cl. 5);
  • dietary supplements (Cl. 5);
  • salad dressings (Cl. 30);
  • fertilised eggs for hatching (Cl. 31);
  • foodstuffs for animals (Cl. 31);
  • live animals (Cl. 31).

CLASS 30

(Staple foods)

Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

Explanatory Note

Class 30 includes mainly foodstuffs of plant origin prepared for consumption or conservation as well as auxiliaries intended for the improvement of the flavour of food.

This Class includes, in particular:

  • beverages with coffee, cocoa, chocolate or tea base;
  • cereals prepared for human consumption (for example, oat flakes and those made of other cereals).

This Class does not include, in particular:

  • certain foodstuffs of plant origin (consult the  Alphabetical List of Goods);
  • salt for preserving other than for foodstuffs (Cl. 1);
  • medicinal teas and dietetic food and substances adapted for medical use (Cl. 5);
  • baby food (Cl. 5);
  • dietary supplements (Cl. 5);
  • raw cereals (Cl. 31);
  • foodstuffs for animals (Cl. 31).

CLASS 31

(Natural agricultural products)

Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.

Explanatory Note

Class 31 includes mainly land products not having been subjected to any form of preparation for consumption, live animals and plants as well as foodstuffs for animals.

This Class includes, in particular:

  • raw woods;
  • raw cereals;
  • fertilised eggs for hatching;
  • mollusca and crustacea (live).

This Class does not include, in particular:

  • cultures of micro-organisms and leeches for medical purposes (Cl. 5);
  • dietary supplements for animals (Cl. 5);
  • semi-worked woods (Cl. 19);
  • artificial fishing bait (Cl. 28);
  • rice (Cl. 30);
  • tobacco (Cl. 34).

CLASS 32

(Light beverages)

Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Explanatory Note

Class 32 includes mainly non-alcoholic beverages, as well as beer.

This Class includes, in particular:

  • de-alcoholised beverages.

This Class does not include, in particular:

  • beverages for medical purposes (Cl. 5);
  • milk beverages (milk predominating) (Cl. 29);
  • beverages with coffee, cocoa or chocolate base (Cl. 30).

CLASS 33

(Wines and spirits)

Alcoholic beverages (except beers).

Explanatory Note

This Class does not include, in particular:

  • medicinal beverages (Cl. 5);
  • de-alcoholised beverages (Cl. 32).

CLASS 34

(Smokers' articles)

Tobacco; smokers' articles; matches.

Explanatory Note

This Class includes, in particular:

  • tobacco substitutes (not for medical purposes).

This Class does not include, in particular:

  • cigarettes without tobacco, for medical purposes (Cl. 5);

SERVICES

CLASS 35

(Advertising and business)

Advertising; business management; business administration; office functions.

Explanatory Note

Class 35 includes mainly services rendered by persons or organizations principally with the object of:

  • (1) help in the working or management of a commercial undertaking, or
  • (2) help in the management of the business affairs or commercial functions of an industrial or commercial enterprise,

as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services.

This Class includes, in particular:

  • the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes;
  • services consisting of the registration, transcription, composition, compilation, or systematization of written communications and registrations, and also the compilation of mathematical or statistical data;
  • services of advertising agencies and services such as the distribution of prospectuses, directly or through the post, or the distribution of samples.  This Class may refer to advertising in connection with other services, such as those concerning bank loans or advertising by radio.

This Class does not include, in particular:

  • services such as evaluations and reports of engineers which do not directly refer to the working or management of affairs in a commercial or industrial enterprise (consult the Alphabetical List of Services).

CLASS 36

(Insurance and financial)

Insurance; financial affairs; monetary affairs; real estate affairs.

Explanatory Note

Class 36 includes mainly services rendered in financial and monetary affairs and services rendered in relation to insurance contracts of all kinds.

This Class includes, in particular:

  • services relating to financial or monetary affairs comprise the following:
    • (a) services of all the banking establishments, or institutions connected with them such as exchange brokers or clearing services;
    • (b) services of credit institutions other than banks such as co-operative credit associations, individual financial companies, lenders, etc.;
    • (c) services of “investment trusts,” of holding companies;
    • (d) services of brokers dealing in shares and property;
    • (e) services connected with monetary affairs vouched for by trustees;
    • (f) services rendered in connection with the issue of travellers’ cheques and letters of credit;
  • hire or lease-purchase financing;
  • services of realty administrators of buildings, i.e., services of letting or valuation, or financing;
  • services dealing with insurance such as services rendered by agents or brokers engaged in insurance, services rendered to insured, and insurance underwriting services.

CLASS 37

(Building construction and repair)

Building construction; repair; installation services.

Explanatory Note

Class 37 includes mainly services rendered by contractors or subcontractors in the construction or making of permanent buildings, as well as services rendered by persons or organizations engaged in the restoration of objects to their original condition or in their preservation without altering their physical or chemical properties.

This Class includes, in particular:

  • services relating to the construction of buildings, roads, bridges, dams or transmission lines and services of undertakings specializing in the field of construction such as those of painters, plumbers, heating installers or roofers;
  • services auxiliary to construction services like inspections of construction plans;
  • services of shipbuilding;
  • services consisting of hiring of tools or building  materials;
  • repair services, i.e., services which undertake to put any object into good condition after wear, damage, deterioration or partial destruction (restoration of an existing building or another object that has become imperfect and is to be restored to its original condition);
  • various repair services such as those in the fields of electricity, furniture, instruments, tools, etc.;
  • services of maintenance for preserving an object in its original condition without changing any of its properties (for the difference between this Class and Class 40 see the Explanatory Note of Class 40).

This Class does not include, in particular:

  • services consisting of storage of goods such as clothes or vehicles (Cl. 39);
  • services connected with dyeing of cloth or clothes (Cl. 40).

CLASS 38

(Telecommunications)

Telecommunications.

Explanatory Note

Class 38 includes mainly services allowing at least one person to communicate with another by a sensory means.  Such services include those which:

  • (1) allow one person to talk to another,
  • (2) transmit messages from one person to another, and
  • (3) place a person in oral or visual communication with another (radio and television).

This Class includes, in particular:

  • services which consist essentially of the diffusion of radio or television programmes.

This Class does not include, in particular:

  • radio advertising services (Cl. 35);
  • telephone marketing (telemarketing) services (Cl. 35).

CLASS 39

(Transportation and storage)

Transport; packaging and storage of goods; travel arrangement.

Explanatory Note

Class 39 includes mainly services rendered in transporting people or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or guarding.

This Class includes, in particular:

  • services rendered by companies exploiting stations, bridges, rail-road ferries, etc., used by the transporter;
  • services connected with the hiring of transport vehicles;
  • services connected with maritime tugs, unloading, the functioning of ports and docks and the salvaging of wrecked ships and their cargoes;
  • services connected with the packaging and parcelling of goods before dispatch;
  • services consisting of information about journeys or the transport of goods by brokers and tourist agencies, information relating to tariffs, timetables and methods of transport;
  • services relating to the inspection of vehicles or goods before transport.

This Class does not include, in particular:

  • services relating to advertising transport undertakings such as the distribution of prospectuses or advertising on the radio (Cl. 35);
  • services relating to the issuing of travellers’ cheques or letters of credit by brokers or travel agents (Cl. 36);
  • services relating to insurances (commercial, fire or life) during the transport of persons or goods (Cl. 36);
  • services rendered by the maintenance and repair of vehicles, nor the maintenance or repair of objects connected with the transport of persons or goods (Cl. 37);
  • services relating to reservation of rooms in a hotel by travel agents or brokers (Cl. 43).

CLASS 40

(Treatment of materials)

Treatment of materials.

Explanatory Note

Class 40 includes mainly services not included in other classes, rendered by the mechanical or chemical processing or transformation of objects or inorganic or organic substances.

For the purposes of classification, the mark is considered a service mark only in cases where processing or transformation is effected for the account of another person.  A mark is considered a trade mark in all cases where the substance or object is marketed by the person who processed or transformed it.

This Class includes, in particular:

  • services relating to transformation of an object or substance and any process involving a change in its essential properties (for example, dyeing a garment); consequently, a maintenance service, although usually in Class 37, is included in Class 40 if it entails such a change (for example, the chroming of motor vehicle bumpers);
  • services of material treatment which may be present during the production of any substance or object other than a building; for example, services which involve cutting, shaping, polishing by abrasion or metal coating.

This Class does not include, in particular:

  • repair services (Cl. 37).

CLASS 41

(Education and entertainment)

Education; providing of training; entertainment; sporting and cultural activities.

Explanatory Note

Class 41 covers mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention.

This Class includes, in particular:

  • services consisting of all forms of education of persons or training of animals;
  • services having the basic aim of the entertainment, amusement or recreation of people;
  • presentation of works of visual art or literature to the public for cultural or educational purposes.

CLASS 42

(Computer and scientific)

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Explanatory Note

Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer programmers, etc.

This Class includes, in particular:

  • the services of engineers who undertake evaluations, estimates, research and reports in the scientific and technological fields;
  • scientific research services for medical purposes.

This Class does not include, in particular:

  • business research and evaluations (Cl. 35);
  • word processing and computer file management services (Cl. 35);
  • financial and fiscal evaluations (Cl. 36);
  • mining and oil extraction (Cl. 37);
  • computer (hardware) installation and repair services (Cl. 37);
  • services provided by the members of professions such as medical doctors, veterinary surgeons, psychoanalysts (Cl. 44);
  • medical treatment services (Cl. 44);
  • garden design (Cl. 44);
  • legal services (Cl. 45).

CLASS 43

(Hotels and restaurants)

Services for providing food and drink; temporary accommodation.

Explanatory Note

Class 43 includes mainly services provided by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and board in hotels, boarding houses or other establishments providing temporary accommodation.

This Class includes, in particular:

  • reservation services for travellers’ accommodation, particularly through travel agencies or brokers;
  • boarding for animals.

This Class does not include, in particular:

  • rental services for real estate such as houses, flats, etc., for permanent use (Cl. 36);
  • arranging travel by tourist agencies (Cl. 39);
  • preservation services for food and drink (Cl. 40);
  • discotheque services (Cl. 41);
  • boarding schools (Cl. 41);
  • rest and convalescent homes (Cl. 44).

CLASS 44

(Medical, beauty and agricultural)

Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Explanatory Note

Class 44 includes mainly medical care, hygienic and beauty care given by persons or establishments to human beings and animals; it also includes services relating to the fields of agriculture, horticulture and forestry.

This Class includes, in particular:

  • medical analysis services relating to the treatment of persons (such as x-ray examinations and taking of blood samples);
  • artificial insemination services;
  • pharmacy advice;
  • animal breeding;
  • services relating to the growing of plants such as gardening;
  • services relating to floral art such as floral compositions as well as garden design.

This Class does not include, in particular:

  • vermin exterminating (other than for agriculture, horticulture and forestry) (Cl. 37);
  • installation and repair services for irrigation systems (Cl. 37);
  • ambulance transport (Cl. 39);
  • animal slaughtering services and taxidermy (Cl. 40);
  • timber felling and processing (Cl. 40);
  • animal training services (Cl. 41);
  • health clubs for physical exercise (Cl. 41);
  • scientific research services for medical purposes (Cl. 42);
  • boarding for animals (Cl. 43);
  • retirement homes (Cl. 43).

CLASS 45

(Personal and legal)

Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

Explanatory Note

This Class includes, in particular:

  • services rendered by lawyers to individuals, groups of individuals, organizations and enterprises;
  • investigation and surveillance services relating to the safety of persons and entities;
  • services provided to individuals in relation with social events, such as social escort services, matrimonial agencies, funeral services.

This Class does not include, in particular:

  • professional services giving direct aid in the operations or functions of a commercial undertaking (Cl. 35);
  • services relating to financial or monetary affairs and services dealing with insurance (Cl. 36);
  • escorting of travellers (Cl. 39);
  • security transport (Cl. 39);
  • services consisting of all forms of education of persons (Cl. 41);
  • performances of singers and dancers (Cl. 41);
  • computer services for the protection of software (Cl. 42);
  • services provided by others to give medical, hygienic or beauty care for human beings or animals (Cl. 44);
  • certain rental services (consult the Alphabetical List of Services and General Remark (b) relating to the classification of services).

1401.02(b)   Short Titles for International Trademark Classes  

The USPTO associates the following word titles with the respective international trademark class numbers:

GOODS

1.        Chemicals

2.        Paints

3.        Cosmetics and cleaning preparations

4.        Lubricants and fuels

5.        Pharmaceuticals

6.        Metal goods

7.        Machinery

8.        Hand tools

9.        Electrical and scientific apparatus

10.        Medical apparatus

11.        Environmental control apparatus

12.        Vehicles

13.        Firearms

14.        Jewelry

15.        Musical instruments

16.        Paper goods and printed matter

17.        Rubber goods

18.        Leather goods

19.        Non-metallic building materials

20.        Furniture and articles not otherwise classified

21.        Housewares and glass

22.        Cordage and fibers

23.        Yarns and threads

24.        Fabrics

25.        Clothing

26.        Fancy goods

27.        Floor coverings

28.        Toys and sporting goods

29.        Meats and processed foods

30.        Staple foods

31.        Natural agricultural products

32.        Light beverages

33.        Wines and spirits

34.        Smokers’ articles

SERVICES

35.        Advertising and business

36.        Insurance and financial

37.        Building construction and repair

38.        Telecommunications

39.        Transportation and storage

40.        Treatment of materials

41.        Education and entertainment

42.        Computer and scientific

43.        Hotels and restaurants

44.        Medical, beauty and agricultural

45.        Personal and legal

These short titles are not an official part of the international classification.  Their purpose is to provide a means to quickly identify the general content of numbered international classes.  By their nature, these titles will not necessarily disclose the classification of specific items.  The titles are not designed to be used for classification, but only as information to assist in the identification of numbered classes.  To determine the classification of particular goods and services, it is necessary to refer to the Alphabetical List of Goods and Services, the class headings of the international classes, and Explanatory Notes in the International Classification of Goods and Services for the Purposes of the Registration of Marks (10th ed. 2011), published by WIPO.  The full names of international classes are set forth in 37 C.F.R. §6.1.

The short titles are printed in the Official Gazette in association with the international class numbers under MARKS PUBLISHED FOR OPPOSITION, Sections 1 and 2; TRADEMARK REGISTRATIONS ISSUED, PRINCIPAL REGISTER, Section 1; TRADEMARK REGISTRATIONS ISSUED UNDER SECTION 1(d), Sections 1 and 2; and SUPPLEMENTAL REGISTER, Sections 1 and 2.

The international trademark classification was adopted by the United States as its system of classification as of September 1, 1973.  See 911 TMOG 210 (June 26, 1973).  The use of short titles was announced in a notice at 924 TMOG 155 (July 16, 1974).

1401.02(c)   International Alphabetical List

Additional general guidance concerning identifications may be found in the “Alphabetical List” of goods and services appearing in the International Classification of Goods and Services for the Purposes of the Registration of Marks Under the Nice Agreement-Part I (10th ed. 2011), published by the World Intellectual Property Organization, 34, chemin des Colombettes, P.O. Box 18, CH-1211 Geneva 20 Switzerland.  (Specify the English edition when ordering.)  The International Classification is available at http://www.wipo.int/classifications/en/index.html.  However, because the international list was developed to classify goods and services and not to identify specific goods and services, most entries will not be sufficiently definite to use in an identification of goods and/or services.  If such entries are provided as identifications, the USPTO exercises its discretion to require greater particularity.  See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).

The USPTO’s Acceptable Identification of Goods and Services Manual (“USPTO ID Manual”) should be used to determine whether an identification is sufficiently definite.  See TMEP §1402.04.

1401.03   Designation of Class

In an application for registration of a mark, the applicant should designate the international class number(s) that are appropriate for the identified goods and/or services whenever the information is known.  37 C.F.R. §2.32(a)(7).  See TMEP §1401.02(a) for the international classification schedule with explanatory notes.

In an application under §1 or §44, incorrect classification will be corrected by amendment.  See TMEP §1401.03(b).

1401.03(a)   Designation of Class by Applicant Normally Initially Accepted in Applications Under §§1 and 44

Sometimes, a product could be classified in more than one class.  Some products are classified differently depending on the type of material of which the product is composed, or a particular use of the product.  For example, plastic statuettes are in Class 20 while glass statuettes are in Class 21; reagents for research purposes are in Class 1 while reagents for medical use are in Class 5.  Generally, in applications under §1 or §44 of the Trademark Act, prior to their assignment to an examining attorney, the USPTO retains the class number designated by the applicant, in the absence of any information clearly contradicting that classification.  The applicant may be asked for further clarification for classification of goods of this type during the examination of the application.  If the wording in the identification is broad enough to encompass more than one class, amendment will be required.  See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (“chronographs” held indefinite because it includes both time recording devices in Class 9 and watches in Class 14).  Also, if the examining attorney determines that the class designated by the applicant is incorrect, the examining attorney will require reclassification.

1401.03(b)   Designation of Class by USPTO When Class Number Is Not Designated or Is Inaccurate in Application Under §1 or §44  

In an application under §1 or §44 of the Trademark Act, if the applicant does not designate a class number(s), the USPTO will do so.  If the class number(s) indicated by the applicant is clearly wrong (e.g., goods are classified in a service class), the USPTO will change the classification, either prior to or during examination.

Upon examination, the classification must be amended if the class numbers are incorrect.  When the examining attorney requires or recommends an amendment of the identification of goods and/or services that would necessitate an amendment of the classification, the examining attorney should also require the applicant to amend the classification.

If an incorrect class number was designated by the Pre-Examination Section, and the examining attorney must issue an Office action, he or she must also inform the applicant of the correct class number for the identified goods and/or services, and require amendment of the classification.  If it is unnecessary to issue an Office action, the examining attorney must ensure that the correct classification is entered into the electronic records of the USPTO.

The examining attorney may amend or correct classification through an examiner’s amendment, without prior authorization by the applicant.  Groening v. Missouri Botanical Garden, 59 USPQ2d 1601 (Comm’r Pats. 1999).  See TMEP §707.02.

Before approving an application for publication, the examining attorney must check to make sure that the properly assigned class is reflected in the electronic records of the USPTO.

1401.03(c)   Failure to Classify May Delay Action in Applications Under §§1 and 44

The applicant should make an initial effort at classification, using the Alphabetical List of Goods and Services.  In an application under §1 or §44 of the Trademark Act, when an application and fee is filed for a single class, but the identification lists a large number of items that obviously involve many classes, the examining attorney will require the applicant to properly classify the items.  Class designations must be determined and fees for multiple classes must be paid before an examining attorney does an extensive search in a large number of classes.  See TMEP §810.01.

1401.03(d)   Classification Determined by World Intellectual Property Organization in §66(a) Applications

37 C.F.R. §2.85(d)  Section 66(a) applications and registered extensions of protection.

In an application under section 66(a) of the Act or registered extension of protection, the classification cannot be changed from the classification assigned by the International Bureau of the World Intellectual Property Organization, unless the International Bureau corrects the classification.  Classes cannot be added, and goods or services cannot be transferred from one class to another in a multiple-class application.

In an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), i.e., a request for protection of an international registration to the United States pursuant to the Madrid Protocol, the International Bureau of the World Intellectual Property Organization (“IB”) controls classification.  Article 3(2) of the Protocol.  The IB classifies the goods and services in the appropriate classes of the International Classification of Goods and Services for the Purposes of the Registration of Marks in effect at the time international registration is filed. Subject to the conformity of the international application with other applicable requirements, the international registration will be issued in accordance with the classification and grouping that the IB considers to be correct. Common Regulations under the Madrid Agreement and Protocol, Rule 12(9). The USPTO will be notified of the edition of the Nice Agreement used and it will be listed in the request for extension of protection.

The §66(a) application (and any resulting registration) remains part of the international registration, and a change of classification in the United States would have no effect on the international registration.  Therefore, the international classification of goods and/or services in a §66(a) application cannot be changed from the classification given to the goods/services by the IB, even if the IB’s classification of goods/services in the §66(a) application is different from the classification set forth in the USPTO ID Manual.  Classes cannot be added, and goods or services cannot be transferred from one class to another in a multiple-class application.  37 C.F.R. §2.85(d).

Accordingly, if the mark in a §66(a) application appears to be a certification or collective membership mark, the USPTO will not reclassify it into United States Class A, B, or 200.  However, the applicant must comply with all other United States requirements for certification and collective membership marks, regardless of the classification chosen by the IB.  See TMEP §§1304 et seq., regarding collective membership marks, TMEP §§1306 et seq. regarding certification marks, and TMEP §1904.02(d) regarding §66(a) applications for these types of marks. See also TMEP §1904.02(c)(v) regarding the effect of indicated classes in registered extensions of protection and published applications under §66(a).

For purposes of identification of goods or services, the examining attorney will examine a §66(a) application according to the same standards of specificity used in examining applications under §§1 and 44 of the Trademark Act.  That is, the examining attorney must follow the procedures set forth in the TMEP and identify the goods/services in accordance with the USPTO ID Manual whenever possible.  See TMEP §§1904.02(c) et seq.

See also TMEP §1402.01(c) regarding the identification and classification of goods and services in a §66(a) application and 1904.02(b) regarding the examination of classification of goods and services in a §66(a) application.

1401.04   Classification Determines Number of Fees

15 U.S.C. §1112  (Extract)

*** The applicant may apply to register a mark for any or all of the goods or services on or in connection with which he or she is using or has a bona fide intention to use the mark in commerce:  Provided, That if the Director by regulation permits the filing of an application for the registration of a mark for goods or services which fall within a plurality of classes, a fee equaling the sum of the fees for filing an application in each class shall be paid, and the Director may issue a single certificate of registration for such mark.

Classification is the basis for determining the number of fees that must be paid.  In an application under §1 or §44 of the Trademark Act, a fee is required for each class.

In an application under §1 or §44, if the application sets forth goods or services in more than one class and pays insufficient fees to cover all the classes, the applicant must either amend the application to restrict the goods or services to the number of classes for which the fee has been paid, or submit additional fees to cover all the goods or services set forth in the identification.  The fees for multiple classes must be paid before an examining attorney does an extensive search in a large number of classes.  See TMEP §810.01.

If, with the original application, the applicant submits fees for more classes than are validly represented in the application, the fees that have been overpaid in error will be refunded.  See TMEP §405.04 regarding refunds.

In a §66(a) application, the amount of the filing fee will be determined by the IB, who will collect the fee and send it to the USPTO pursuant to the provisions of the Madrid Protocol and the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (“Common Regs.”).  The examining attorney will not question the sufficiency of the filing fee in a §66(a) application.  The classification in a §66(a) application cannot be changed, and classes cannot be added.  See TMEP §1401.03(d) for further information.

1401.04(a)     Prior United States Classification System

Prior to the adoption of the International Classification in 1973, the United States Classification was the controlling classification used in the USPTO.  After adoption of the International Classification, the United States Classification became a secondary classification system.  United States classes are still assigned to all applications by a computerized system.  Each international class is coordinated with the United States classes that are most frequently associated with it.  Neither examining attorneys nor any other USPTO personnel have the authority or capability of altering these automatically assigned secondary United States Classification designations.

1401.04(b)   Limiting Goods and Services to the Number of Classes for Which Filing Fees Are Paid

An application may list, in connection with each international class number designated, only goods or services that fall within that class.  An applicant may apply to register a mark for any or all of the goods and/or services on or in connection with which the applicant is using or has a bona fide intent to use the mark in commerce, if the applicant submits a filing fee for each class.  See 15 U.S.C. §1112; 37 C.F.R. §2.86(a).  An application that includes more than one class of goods or services is called a combined or multiple-class application.  See TMEP §§1403 et seq.

The applicant should designate only the number of classes for which a filing fee is submitted and should limit the specified goods and services to those within the particular class(es) designated.  Thus, if a single filing fee is submitted, the applicant should designate only one class and should limit the goods or services specified in the identification to items in that class.

The examining attorney must require any necessary amendments to ensure that the classification is correct for the specified goods or services.  In an application under §1 or §44 of the Trademark Act, if the applicant identifies goods or services that are classified in a greater number of classes than the classes for which filing fees have been paid, the examining attorney must require that the applicant either:  (1) pay the additional fees; or (2) amend the identification to restrict the application to the number of classes for which fees have already been paid.  See TMEP §§810.01 and 1403.02(c).

In a §66(a) application, the amount of the filing fee will be determined by the IB, who will collect the fee and send it to the USPTO, pursuant to the provisions of the Madrid Protocol and the Common Regs.  The examining attorney will not question the sufficiency of the filing fee in a §66(a) application.  The classification in a §66(a) application cannot be changed, and classes cannot be added.  See TMEP §1401.03(d).

1401.05   Criteria on Which International Classification Is Based

The Alphabetical List of Goods and Services according to the International Classes contains information about the appropriate class for particular products and services.  See TMEP §1401.02(c).  See also the Explanatory Notes at the end of each class heading of goods or services.  TMEP §1401.02(a).  These notes explain the principles and differentiating lines on which the international classes are based.

The General Remarks of the Nice Agreement set forth general criteria for placing goods or services in the international classes. See TMEP §1401.02(a).

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 lists items that are classified in other classes.  Generally, kits are identified and classified in two ways.  If the kit is for the purpose of making a single object, it would be classified by the item it is intended to make (e.g., kits for making bird feeders would be classified in Class 21, even though the individual components would be classified in other classes).  If the applicant is willing to call its kit a "hobby craft kit" and indicate its purpose (e.g., hobby craft kit for making pot holders), the item can be classified in Class 28 as a kind of toy or amusement product. In addition, 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 the principal components.

If the kit is a combination of a number of items around a theme (e.g., nail care kits and student "survival" kits), the class that includes the majority of individual items in the kit controls the classification for the entire kit.  Thus, a nail care kit comprising primarily nail polish, nail polish remover, and false nails is classified in Class 3 even if it also includes nail files (Class 8) and an instruction manual (Class 16).  In such cases, the identification must indicate the type of kit and list the components, with the items in the predominant class listed first.  If the components of the kit do not appear to have a predominant class (e.g., the kit contains two or three items, each in a different class), the applicant may elect which class(es) the kit should be in, but the identification must still list the goods that control the class first in the list of components.  A few specific types of kits are listed in the USPTO ID Manual; other kits are classified on a case-by-case basis.

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.” The predominant elements should be listed first and the item will be classified accordingly.

Example - Computer software is classified in Class 9. Instructional manuals are classified in Class 16. The item “Computer software for investment management and instructional manuals related thereto, sold as a unit” would be classified in Class 9. “Instructional manuals in the field of investment management 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.  Class 9 goods include those used for scientific research or industrial purposes, while Class 10 goods are used for medical treatment or diagnostic purposes.  This distinction may mean that the same goods could be classified in either class depending upon their use.  However, even if the goods perform the same function, they are often different in nature, depending on whether they are for industrial or research use, or for medical treatment or diagnostic use.  For example, a thermometer for medical use is in Class 10, while thermometers other than for medical use are in Class 9.  While both items measure temperature, they are usually very different in nature.

Some goods are classified in Class 10 when they are for medical use and in another class when they are not for medical use.  An item should be specified as being for medical use if it could be in a class other than Class 10 when not for medical use.  For example, lasers for medical use are in Class 10, while lasers not for medical use are in Class 9.  Items for use by invalids or handicapped individuals are also classified in Class 10.  Thus, toilets adapted for handicapped persons are in Class 10, while toilets (without any further specification) are in Class 11.  Finally, if an item is normally not classified in Class 10 (see the Class 11 example above), it is not necessary to specify that it is not for medical use when it is classified in its normal class.  When that item is used for medical purposes, the medical use must be specified in order to justify its classification in Class 10.  If it is possible for an item to be commonly used for medical or non-medical purposes, its purpose must be specified in the identification in order for it to be classified appropriately (see the example regarding lasers above).

1401.05(c)   Classification and Plurality of Uses

A product or service 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 or service 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 classification 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.

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., 175 USPQ 505 (TTAB 1972), 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 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 USPTO 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 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.

1401.06   Specimen(s) as Related to Classification

As a general rule, the specimen(s) in an application under §1 of the Trademark Act helps to determine the correct classification.  The examining attorney should carefully review the specimen to ensure that the identification and classification of the goods and/or services is accurate.  If the information on the specimen and the wording of the identification differ, or if some significant characteristic shown in the specimen is omitted from the identification, the assigned class number may be incorrect.  See TMEP §1402.05.  However, the examining attorney must remember that, generally, a specimen need only support use of the mark on one item in each class of goods or services set forth in an application.  See TMEP §904.01(a).

1401.07   Specimen Discloses Special Characteristics

The classification of goods could be affected if the specimen shows that the mark identifies a composition, an ingredient, or a part that exists in the market only as a component of another product, but the identification does not reveal that the item exists only as a component of a specified product.

If the specimen indicates that the goods are promoted for industrial use only, this should be reflected in the identification when it affects the designation of the correct class.  For example, detergents for use in industrial and manufacturing processes are classified in Class 1, not in Class 3 where other detergents are classified.

If the specimen shows that the mark identifies a structural part of a machine, this should be reflected in the identification, because parts for machines are generally classified with the machine if the part has no applicability elsewhere.

If the mark is used or intended to be used on raw materials such as plastics or resins which may be marketed in a variety of forms (such as sheets, powders, or solutions, or as materials that may be either natural or synthetic), these facts should be indicated in the identification of the goods.  This is important because some raw materials are classified in several international classes; for example, plastic in sheet form is in a different class from plastic in powder form, and synthetic materials are in a different class from those that are natural.  Usually, a specimen will disclose these characteristics of raw materials.

If the specimen indicates that a product is made of a particular material, the identification should specify the material, because many finished products are classified on the basis of the material composition of the article.  Generally, if a classification is dedicated to a particular type of goods, the material composition for those goods does not have to be indicated in the identification.  For example, Class 20 is the proper class for furniture.  This is true even when the furniture is made of metal.  Metal furniture is not classified in Class 6 with other metal products because there is an acceptable class (Class 20) for all furniture regardless of material composition.  On the other hand, ladders do not have a specifically designated class, and therefore they are classified by material composition:  metal ladders are in Class 6; wood or plastic ladders are in Class 20; and rope ladders are in Class 22.

1401.08   Classification and the Identification of Goods and Services

The items listed in the identification of goods and services must be limited to those on or in connection with which the applicant uses or has a bona fide intention to use the mark in commerce.  The entire contents of a class, as represented by the short title of the class, should not be set forth as the identification of goods or services.  The short titles of the classes indicate the general scope of the classes and are generally too broad and inclusive to be used to identify particular goods or services.

1401.09   Changes in Practice Based on the Restructuring of International Class 42 in the 8th Edition of the Nice Agreement  

Effective January 1, 2002, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”) was amended to add three new service classes (Classes 43 through 45).  These new classes arose from the extensive restructuring of Class 42.  In the course of that restructuring, many activities were removed from Class 42 and placed in one of the three new classes.

The purpose of the Nice Classification is to group, as much as possible, like goods or services in a single class.  Generally, the system is successful in achieving that purpose.  However, over the years, it became apparent that Class 42 included many disparate services.  This was due in large part to the inclusion of the language “services that cannot be classified in other classes” in the class heading for Class 42.  This language allowed services as different as “chemical research” and “horoscope casting” to be included in the class.  Therefore, after much study and discussion, the Committee of Experts for the Nice Agreement approved the restructuring of Class 42.  The restructuring amended Class 42 by limiting the scope of the services included in this class to computer, scientific, and legal services, and created three additional classes that grouped services previously classified in Class 42 into new classes that kept like services grouped together.  See TMEP §1401.02(a); see also TMEP §1401.10(a) regarding later reclassification of legal services to Class 45.

Effective January 1, 2002, the language “services that cannot be classified in other classes,” which previously appeared in the class heading of Class 42, was eliminated.  See TMEP §1401.09(a).

1401.09(a)   Elimination of “Miscellaneous Class Designation”

Prior to January 1, 2002, the language “services that cannot be classified in other classes” appeared in the class heading of Class 42.  Effective January 1, 2002, this language no longer appears in any of the class headings or explanatory notes of the Nice Agreement.  The Committee of Experts found that the revision of the Nice Agreement created an adequate number of well-defined classes so that this language was no longer necessary.  Services must now be identified with sufficient clarity and precision to allow for appropriate classification in one of the eleven service classes.

See TMEP §§1402.11 et seq. for further information about the changes in identification and classification of services.

1401.10   General Summary of Major Changes in Practice Based on the 9th Edition of the Nice Agreement  

The requirements of the 9th edition of the Nice Agreement apply to applications filed on or after January 1, 2007.  For applications filed on or after the effective date of the 10th edition (i.e., January 1, 2012), any changes in practice brought about by the 10th edition supersede the 9th edition to the extent any inconsistency exists. See TMEP §§1401.11-1401.11(e) for the general summary of changes in practice based on the 10th edition of the Nice Agreement.

The most notable changes under the 9th edition are:  the transfer of all legal services from Class 42 to Class 45; the determination that items made of precious metals should be classified according to their function rather than in Class 14 merely because they are made of precious metal; and the transfer of aquaria and related items from Class 16 to Class 21.  These changes are discussed below.

1401.10(a)   Legal Services Transferred to International Class 45

Effective January 1, 2007, legal services were transferred from Class 42 to Class 45.  Class 42 is now limited to purely computer, scientific, technological, engineering, and design services.

In 2002, when the Nice Agreement was amended to add three new service classes, Class 42 was restructured, but legal services remained in Class 42.  However, over the five-year revision period that led to the 9th edition, it became apparent that Class 42 was not the most appropriate class for these services.  The ultimate decision to include these services in Class 45 was based on an item in the class heading for Class 45 - “security services for the protection of property and individuals.”  The Committee of Experts reasoned that legal services are an extension of the security services already in Class 45.  Security services provide for the protection of property and individuals, and the enforcement of that security is in the hands of the legal profession.  

1401.10(b)   Goods Made of Precious Metal are Classified According to Their Function

Class 14 went through the most extensive revision of all of the classes in the 9th edition of the Nice Agreement.  The Committee of Experts decided that items made of precious metal that were classified in other classes based on their function when not made of precious metal, should also be classified in those classes.  Goods made of precious metal that are not classified by function, but rather by material composition, e.g., statues, figurines, and key holders, are still classified in Class 14.  This decision eliminated much of the confusion in this class caused by some goods being listed in Class 14 when made of precious metal and in other classes when not made of precious metal, while other goods were classified according to function without reference to any particular material composition.  For example, nutcrackers were classified in Class 14 when made of precious metal and in Class 8 when not made of precious metal.  However, cutlery, namely forks, knives, and spoons were classified only in Class 8, even if made of precious metal, even though it is not uncommon for cutlery to be made of precious metal.  The changes in the 9th edition were intended to eliminate this inconsistency.

1401.10(c)   Transfer of Aquaria and Related Items

Indoor aquaria, its related accessory aquarium hoods, and indoor terrariums [vivariums] were previously classified in Class 16 because they were considered educational.  This may have been true when they were first introduced into the Nice Agreement list, but that is a minimal or secondary use today.  Most often, these goods are found in homes or offices as hobby or decorative items.  They are traditionally made of glass so that the contents are visible.  Therefore, they were transferred to Class 21, the main class for other glass items.  Other aquarium items with specific uses or functions remain in their 8th edition classes.  These items include aerating pumps for aquaria in Class 7, aquarium gravel and sand in Class 19, and aquarium lights, heaters, and filtering apparatus in Class 11.  However, large public aquaria that are, in fact, structures are classified in Class 19, since they are made primarily from nonmetallic materials.  The aquaria transferred from Class 16 to Class 21 are those that may be found in homes or offices and would not be considered structures in the nature of a building.

1401.11   General Summary of Major Changes in Practice Based on the 10th Edition of the Nice Agreement

A number of changes in the international classification of goods and services occurred in connection with the 10th edition of the Nice Classification System, which went into effect January 1, 2012. Thus, the requirements of the 10th edition apply only to applications filed on or after January 1, 2012. Several notable changes are discussed below. A comprehensive view of the changes and their impact on USPTO identification and classification policy can be found in the International Classification of Goods and Services for the Purposes of the Registration of Marks (10th ed. 2011), published by the World Intellectual Property Organization and available online at http://www.wipo.int, and the USPTO ID Manual, available via the USPTO website at http://tess2.uspto.gov/netahtml/tidm.html.

1401.11(a)   Electric/Electrothermic Goods

Under the 10th edition, a number of electric/electrothermic goods that were previously in Class 9 are now classified in the same class as their non-electric or non-electrothermic counterparts. Electric/electrothermic goods transferred from Class 9 to Class 7 include vending machines, electric door openers, and electrodes for welding machines. Cigar lighters for automobiles were transferred from Class 9 to Class 12 (as a land vehicle part). Automatic turnstiles were deleted from Class 9 because they are considered building materials and thus are classified according to material composition, with metal turnstiles classified in Class 6 and non-metal turnstiles classified in Class 19. The ID Manual should be consulted for the identification and classification of other electric/electrothermic goods.

1401.11(b)   Amusement and Game-Playing Apparatus

Under the 9th edition, “hand-held units for playing electronic games for use with external display screens or monitors” were classified in Class 9, and “hand-held units for playing electronic games other than those for use with external display screens or monitors” were classified in Class 28. Under the 10th edition, all amusement and game-playing apparatus, whether for use with an external monitor or display screen or having a built-in monitor or display screen, is classified in Class 28.

1401.11(c)   Food Additives

Under the 10th edition Nice Alphabetical List, food additives are classified in Classes 1, 5, and 29-33 according to their particular purposes. Previously, the Nice Alphabetical List recognized only two types of food additives - those for medical purposes in Class 5 and those in the nature of raw materials in Class 1. The 9th edition was silent on the classification of food additives used as ingredients in cooking and/or baking for domestic purposes. Under the 10th edition, food additives for industrial purposes, including those for use in manufacturing food, are classified in Class 1. Additionally, food additives for medical purposes and for use as dietary supplements are classified in Class 5, and food additives for culinary purposes are classified in Classes 29-33, according to the particular nature of the food additive. The 10th edition also requires that the food additive be specifically named (e.g., “lecithin for culinary purposes” in Class 29). This requirement is especially important when the food additives are for culinary purposes because classification of such goods is determined by their nature.

1401.11(d)   Dietetic Substances and Meal Replacements

The 10th edition amended the Class 5 class heading to include “meal replacements, dietetic food and beverages, adapted for medical or veterinary use.” For classification in Class 5, these three items must be identified as being “adapted for medical use” (or include other language indicating that these items are adapted for a particular medical use) to make clear that their purpose and use are not as part of a regular diet for human beings or animals. The specific meal replacement, dietetic food, or dietetic beverage item must also be indicated.

The Class 5 class heading was also amended to exclude “meal replacements, dietetic food and beverages not for medical or veterinary consumption (Cl. 29, 30, 31, 32 or 33).” This specific exclusion is a corollary to the inclusion discussed above. Previously, all meal replacements were classified in Class 5, and the Nice Agreement was silent regarding how to classify dietetic food and beverages that were not for medical or veterinary purposes. Meal replacements and dietetic food and beverages that are not for medical or veterinary use must now be identified with adequate specificity to determine the particular food or beverages classes in which they should be classified.

1401.11(e)   Marketing Services

“Marketing” was added to the Nice Alphabetical List, in Class 35, under the 10th edition. The Nice Agreement was previously silent regarding marketing services. The addition of “marketing” reflects the recognition by the Committee of Experts that the most common use of the term “marketing” refers to promoting the goods and services of others.

1401.12   Implementation of Changes to the Nice Agreement

When a new edition of the Nice Agreement is issued, any changes apply only to applications filed on or after the effective date of the change. 37 C.F.R. §2.85(e)(1). In a §1 or §44 application filed before the effective date of the change, the examining attorney may give the applicant the option of remaining in compliance with the edition of the Nice Agreement that was in effect on the application filing date or amending the application to comply with the requirements of the current edition. The applicant may, of its own accord, submit an amendment to its application that brings it into compliance with the current edition of the Nice Agreement. However, if an applicant chooses to comply with the current edition, the applicant must comply with the current edition for all the goods and/or services in the application, and the applicant must pay the fees for any added class(es) resulting from changes in the current edition. 37 C.F.R. §2.85(e)(2). An applicant cannot choose to have some items comply with the current edition and other items comply with the requirements of a previous edition.

1401.13   Effective Date of Changes to USPTO ID Manual

The “Effective Date” field in the USPTO ID Manual indicates the date on which the status (i.e., Added, Modified, or Deleted) of a particular entry went into effect.  When the “effective date” field in the manual changes, the new requirements established by that particular entry apply only to applications filed on or after the date of the change.  In a §1 or §44 application filed before the effective date of the change, the examining attorney may give the applicant the choice to either keep the existing identification and/or class or amend to the new identification and/or class.  However, if an applicant chooses to comply with the new identification and/or class, the applicant must pay the fees for any added class(es) resulting from the change.  37 C.F.R. §2.6(a)(1).  Therefore, if an Office action is issued before the effective date, and the action is inconsistent with the new or modified entry, the applicant may be given the choice to either keep the existing identification and/or class or amend to the new identification and/or class if a subsequent Office action is issued.  However, if a first Office action is issued on or after the effective date, any amendment to the specific portion of the identification or classification that relates to a previously acceptable identification and/or classification must comply with the new or modified entry.