T.M.E.P. § 1401.09
Changes in Practice Based on the Restructuring of International Class 42 in the 8th Edition of the N

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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 (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 that 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).

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

1401.09(a) Elimination of "Miscellaneous Class Designation"

As previously noted, 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 "services that cannot be classified in other classes" 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(a) et seq. for further information about the changes in identification and classification of services.

1401.09(b) Implementation of the Changes

The new requirements of the 8th edition of the Nice Agreement apply only to applications filed on or after January 1, 2002. In an application filed before January 1, 2002, the examining attorney may give the applicant the option of remaining in compliance with the 7th edition of the Nice Agreement or amending the application to comply with the classification requirements of the 8th edition. The applicant may, of its own accord, submit an amendment to its application that brings it into compliance with the 8th edition of the Nice Agreement.