T.M.E.P. § 1401.06
Specimens as Related to Classification
Executive summary:
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1401.06 Specimens 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 are accurate. If the information in the record and the wording of the identification differ, or if some significant characteristic shown in the record is omitted from the identification, the assigned class number may be incorrect. See TMEP §1402.05. However, the examining attorney must remember that, generally, the 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).
1401.06(a) 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, and 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 or pellet 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 there is a classification 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 regardless of whether 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, there is no class specifically designated for ladders. Therefore, ladders 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.
The only exception to this general guideline is in the area of precious metal. Most items that are made of precious metal are classified in Class 14, even when there is another class in which those goods would be classified if they were made of any other material. For example, nut crackers are classified in Class 8 whether they are made of plastic, wood, nonprecious metal or any other material except precious metal. Nut crackers made of precious metal are in Class 14.