The Identification of Goods and Services Manual (ID Manual) currently lists "Up-dating of computer software" and "Maintenance of computer software" in Class 42. By analogy, other similar activities that relate to computer software are also in Class 42. Ex amples of these other similar activities are installation of software and repair of software. These activities do not involve a physical repair or maintenance as contemplated by services in Class 37. Installation, repair and maintenance of software is acc omplished by programming or reprogramming of the software itself and programming of software has always been a Class 42 activity.
The ID Manual currently lists "Production of energy" in Class 40. By analogy, other similar activities that relate to the production of energy are in Class 40. Examples of these other similar activities are generation and creation of various types of ener gy, such as electricity or steam. These activities are different from the services of distribution and transmission of energy, which are classified in 39.
The following is an abbreviated reiteration of memos concerning this topic that have been distributed in the past. Any activity consisting of a service that also happens to be provided by means of a global computer network is classified in the class where the underlying service is classified. For example, banking services are in Class 36 whether provided in a bank or on-line by means of a global computer network. Similarly, the service of providing information by means of a global computer network is classified in the class of the information subject. Entities who offer these services by computer are considered content providers, that is they provide the information or substantive content for a web site and/or home page. A recitation of services for these specific content providers should read providing information in the field of . . . by means of a global computer network. The service would be classified by the class of the subject matter of the information. Services of content providers should NOT be preceded by language that indicates an access activity, e.g., providing access to on-line information in the field of banking or providing multiple user access to a global computer network in the field of banking information. Content providers are not access providers and the term access should be reserved for use by true access providers (see next para graph) in order to avoid confusion as to the real activity being provided by an applicant. (For guidance in how to formulate recitations of services for providing information in fields that fall into a number of classes, see the third paragraph in the section entitled Information, Advice and Consultation Services below.) The service of providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information covers those services provided by entities such as America OnLine®, Prodigy® and CompuServe. They provide the computer service that enable computer users to access data bases and home pages of others. This is not to be confused with the fiber optic, modem or satellite connectivity that provides the technical telecommunications connectivity used by the access providers to perform their services. The service of providing these telecommunications connections to a global computer network is classified in Class 38. It is ONLY the technical means by which one computer can communicate with another. The telecommunications provider does NOT provide the computer hardware that stores and processes the data; it provides the means by which data is transferred.
Identifications regarding production and distribution of motion pictures and television programs have been accepted in Class 41 for many years. This service involves the actual creation of the motion picture or television program and the accompanying activity of distributing it to movie theatres and television stations for display to the public. In this service, the ownership of the physical product does not leave the producer. The movie theatre or television stations 'lease' (in a sense) the film or tape for a period of time and then return it to the producer. This is not the case when distribution relates to videotapes, audio tapes or other hard goods that result from the production of visual or audio entertainment. When these goods are distributed, it is the same as the distribution of any other kind of hard goods by any other manufacturer. The ownership of the physical product is transferred to the purchaser just as it is with clothing, toys, food products or computers. For this reason, distribution of videotapes, audio tapes, video disks, etc. should not be accepted as a service even when the distribution is linked to the production of these goods. The production of the entertainment product is perfectly acceptable in Class 41; however, the distribution of the hard goods that result from that production is not a service in that class. It is possible that such distribution could be considered a distributorship service in Class 35, but that must be determined on a case by case basis. It must be remembered that distribution of one's own goods exclusively is not considered a service; it is merely a necessary part of doing business. However, if the applicant distributes the videotapes, etc. of others as well as those it has produced, it may be considered to have the Class 35 distributorship service.
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 indicates 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. If the kit is a combination of a number of items around a theme, (e.g., first aid kits, nail care kits, student survival kits,) the class that would include the majority of individual items in the kit would control the classification for the entire kit. Thus, a first aid kit that comprised primarily bandages for skin wounds, antiseptic and aspirin would be classified in Class 5 even though it also included tweezers (Cl. 8) and an instruction manual (Cl. 16.) In such a kit, the identification must indicate the type of kit and list the components with the items in the predominant class set forth as the first items in the list. If the components of the kit do not appear to have a predominant class (e.g., the kit contains two or three items in each of three classes), the applicant may elect which class or classes the kit should be in, but the identification must still list the goods that control the class first in the list of components of the kit. There are a few specific types o f kits listed in the ID Manual however; these items are usually classified on a case by case basis.
Consultation services are generally classified in Class 42 regardless of the field in which the consulting activity is provided. The only exceptions to this are professional business consultation or business management consultation services in Class 35, financial consultations in Class 36 and insurance consultations in Class 36. Unless the consulting services fall into one of these narrow Class 35 or 36 exceptions, they are classified in Class 42. However, if an applicant provides information or advice in a particular field, that service may be classified in the class of service that underlies the information or advice. Information or advice activities usually provide a lesser degree of sophistication in the nature of the service rendered than do consultation services. Thus, while construction consultation services would be classified in Class 42, construction advice or information services would be classified in Class 37 with other construction services. When a mark is used to identify information services that provide information in a wide variety of fields that fall into various classes, an identification and classification scheme similar to the one described above concerning kits (see section above Identification and Classification of Kits) should be used. The recitation should indicate the significant fields in which information is provided. The dominant class of those fields should be ascertained, those fields should be collected in the beginning of the recitation and the recitation should be classified in that dominant class. The other fields may be at the end of the recitation. For example, providing information in the fields of hotels, restaurants and entertainment events should be classified in Class 42 since two of the three areas of information (hotels and restaurants) are classified in Class 42. However, if there is no dominant class, the applicant may elect which class or classes the service should be in, but the recitation must still list the services that control the class first in the list of fields of information. For example, providing information in the fields of hotels, travel and entertainment could be in Classes 39, 41 or 42 depending on which of the subject matter fields was listed first in the recitation. This scheme should be followed for web sites that provide a wide range of information as well. This modification of existing policy is necessary since there will no longer be a miscellaneous class of services in the 2001 revision of the Nice Agreement and the alphabetical list accompanying the Agreement. Thus, recitations such as providing information in a wide variety of fields can no longer be accepted. It will no long be able to classify such a service as a miscellaneous service since there will no longer be a catch-all service class in the Nice Agreement.
Many businesses offer bonus programs or frequent patron programs to encourage patronage of that business. However, promotion of ones own goods or services is not considered a service under the Lanham Act since the beneficiary of such an activity is t he business itself and not a third party. However, these special programs do confer some benefit to the customers who participate in the program but this benefit flows directly from use of the trademark owners goods or services. (The situation usually arises in the case of services so the examples given here will focus on service recitations.) Thus, a frequent flyer program provided by an airline to encourage use of its own air transportation services would be identified as air transportation services featuring a frequent flyer bonus program and it would be classified in Class 39. Similarly, a retail store that has a program through which patrons earn points that result in discounts on future purchases at that store would be identified as retail store services in the field of [indicate field] featuring a frequent patron program in which points are accumulated to be used for discounts on future purchases. This service would be in Class 35 because it is primarily a retail store service. It should be noted that organizing and conducting a program of this type for a third party is a classic promotion/advertising service and would be classified in Class 35 with language such as promoting the goods and services of others by means of a point accumulation program with points used for discounts on future purchases of those goods and services (or whatever the details of the program may be.)
When assessing whether an identification of goods or services is acceptable, the following concepts should be considered: 1. Clarity: Would a non-expert in the field of trademarks or in the field of the applicants goods or services understand what the item or the activity is? 2. Classification: Is there language in the ID that makes classification difficult or ambiguous; are the goods or services clearly in a single class? 3. Scope: Is the scope of protection that would be provided by a registration clear, that is, does the language of the ID adequately define the parameters of the goods or services in the application? If an ID satisfactorily accomplishes these needs for clarity, classification and scope, it should be accepted even if the language proposed by the applicant doesn't appear in the ID Manual.
The existing republication guideline has indicated that a change of class in an application that has been published, whether it concerns a single or multiple class situation, always requires republication of the mark for opposition. However, in three limited areas this guideline will be changed.
- Classes 29 and 30 movement of goods between classes 29 and 30 or the addition of 29 to an application that originally had Class 30 and vice versa does not require republication.
- Retail activities the movement of a retail activity (retail store, distributorship, electronic retailing, etc.) from Class 42 to Class 35 due to the change in the class heading for Class 35 in the Nice Agreement does not require republication.
- Computer game programs the movement of computer game programs from Class 28 to Class 9 due to the change in the Alphabetical List of the seventh edition of the WIPO Classification Manual does not require republication.
The effective date field in the FolioViews ID Manual indicates the date of the status of the particular entry. If an Office action is taken on or before that date and the action is inconsistent with the new or modified entry, the applicant should be given the choice to either keep the existing ID and/or class or to amend to the new ID and/or class. If an Office action is taken after the status date, any ID or class requirement must comply with the new or modified entry.