T.M.E.P. § 1402.11
Identification of Services
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1402.11 Identification of Services
This section addresses identifications of particular types of services.
The major requirements for an acceptable identification of services are: (1) the identification must be definite; (2) it must use the common name or terminology for the services, so as to be readily understandable; (3) it must accurately describe the services; and (4) it must specify the services, and not merely collateral or related activities associated with rendering the services.
Examples - Where a mark identifies checking account services, the identification "banking services in the nature of a checking account" is more accurate than the general identification "banking services," which is inclusive of services that may not be associated with the mark. The former identification is more definite, and clearly stated. On the other hand, if a service mark identifies a bank's many services, then the more general identification "banking services" would be appropriate. Thus, either of these identifications could be accepted depending on the particular circumstances, including the nature of the mark and its use or intended use. In both cases, the services would be classified in Class 36.
Examples - "Radio broadcasting services" (Class 38) would be an appropriate identification when a radio station uses a mark, such as call letters, to indicate the source of its broadcasting services generally. On the other hand, if an applicant is using the name of a weekly comedy television show as a mark, "television broadcasting services" would not be appropriate because the mark does not serve to identify and distinguish the electrical transmission of the program. Instead, the applicant should identify the services as "television entertainment services in the nature of a series of comedy programs" (Class 41).
Generally, the identification of a service should not emphasize the method or manner by which the service is provided. However, in some circumstances, it may be helpful to include such information in a trailing phrase.
Example - "Accounting services" (Class 35) is an acceptable identification of services; thus, whether this type of service is rendered by use of computers or other means need not be mentioned.
Example - "Dinner theater services" (Class 41) emphasizes the entertainment aspect associated with theater generally. The fact that dinner is also served at the theater performance is ancillary to the primary service of presenting the theatrical production.
For franchise services (rendered by a franchisor as distinguished from a franchisee), the identification should include an indication of the type of franchise.
Example - "franchising services, namely, offering technical assistance in the establishment and/or operation of restaurants" (Class 35).
A mark identifying a beauty contest is classified either as a promotional service rendered by the organizer of the contest to the businesses or groups that sponsor the contest, or as an entertainment service. When the record shows that the primary purpose of conducting such a pageant is to promote the sale of goods or services of the sponsors, the service should be recited as "promoting the goods or services of others by means of a beauty contest," in Class 35. Where the beauty contest is presented primarily as entertainment for the general public (such as beauty contests offered in theaters or amusement parks), the service should be identified as, "entertainment services in the nature of beauty contests," in Class 41.
See TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.
1402.11(a) Computer Services
Services Classified in Classes 35, 36, 37, 39, 40, 41, 44 and 45
Any activity consisting of a service that ordinarily falls in these classes (e.g., real estate agency services, banking services, dating services), and that happens to be provided over the Internet, 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 online.
Some acceptable identifications:
- "Providing banking services via the Internet, in Class 36."
- "Arranging travel tours via the Internet, in Class 39."
- "Promoting the goods and services of others by preparing and placing advertisements on websites accessed through the Internet, in Class 35."
- "Electronic payment, namely, electronic processing and transmission of bill payment data, in Class 36."
- "Providing social introduction services by means of an Internet website, in Class 45."
The service of providing information via the Internet is classified in the class of the information subject. Entities that provide these services by computer are considered to be "content providers," that is, they provide the informational or substantive content of a website and/or home page. If an entity provides information in a wide variety of fields, the applicant must select the subject matter to be protected and classify the services accordingly (e.g., banking information in Class 36, business information in Class 35, home repair information in Class 37). See TMEP §1402.11(b) regarding information services.
Some acceptable identifications:
- "Providing information in the field of banking via websites on the Internet, in Class 36."
- "Providing a website featuring information in the field of banking, in Class 36." This is purely an information provision service and should be treated accordingly. Note: The identification "providing a website in the field of _________" is not acceptable because there is no indication of what the services are, e.g., providing information, online retail store services.
- "Providing information in the field of travel destinations, in Class 39."
Class 38: Provision of Telecommunications Connections to the Internet
These services primarily involve providing telecommunication connections such as those provided by AT&T(r) and MCI(r). Telecommunication connections are the technical means by which one computer can communicate with another. A telecommunications provider is NOT providing the computer technology that transfers the data; rather, it provides the means by which that data or information is transferred. This service connects the user to the "link provider" (see discussion below) or the website itself.
Remember: Just because the applicant is conducting an activity that may involve transmission of data on the Internet does not mean the applicant's service is a Class 38 service. For example, an applicant who merely has a website is not conducting "electronic transmission of messages and data," in Class 38. The companies providing the Internet connections are conducting the actual transmissions; the applicant is merely making the information available.
"Online bulletin boards" and "chat rooms" are classified in Class 38 regardless of the content or subject matter. The rationale for this stems from the fact that these services allow individuals to communicate with each other, like other Class 38 services.
"Providing multiple-user access to the Internet," is classified in Class 38. Note: This identification covers those services provided by Internet Service Providers ("ISPs"), such as Erol's(r), Mindspring(r), MCI(r), and AT&T(r). They provide the computer connection (often using the Class 38 telecommunications services of other entities) that enables a computer user to access the databases and home pages of others via the Internet. These entities are considered "link providers" in that they provide the computer connection needed for a computer user to access a content provider. The word "access" should be limited to these services and should not be used in describing the services of a content provider.
Some acceptable identifications:
- "Provision of telecommunications connections to the Internet, in Class 38."
- "Electronic mail services, in International Class 38."
- "Broadcasting television or radio programs via the Internet, in Class 38."
- "Webcasting audio/visual programming via the Internet, in Class 38."
- "Video and audio teleconferencing via the Internet, in Class 38."
- "Providing an online bulletin board in the field of medicine, in Class 38."
- "Providing online chat rooms for transmission of messages among computer users concerning teen topics, in Class 38."
- "Providing multiple-user access to the Internet, in Class 38." Many ISPs, such as AOL(r), Prodigy(r) and CompuServe(r), have also expanded their services to encompass content-based services for their subscribers. The "providing multiple-user access" identification only covers the ISP services. If the applicant wishes to protect its "content-based" services, it must identify those services with specificity and pay the appropriate fees therefor, if applicable.
Office Function-Type Computer Services
These services are essentially office function services (e.g., filing and record keeping) that happen to be conducted with the use of a computer:
- "Data processing services, in Class 35."
- "Computer data entry and data retrieval services, in Class 35."
Computer Installation and Repair Services
The applicant must distinguish between computer hardware and computer software. For example:
- "Installation, maintenance and repair of computer hardware systems, in Class 37."
- "Installation, maintenance and updating of computer software systems, in Class 42."
If the installation and maintenance services refer to networks or systems, the service should be classified in Class 37. For example:
"Installation, maintenance and repair of computer systems, in Class 37."
If the applicant applies for "technical support services," the examining attorney should suggest both of the following two identifications:
- "Installation and maintenance services in either Class 37 or 42 (depending on whether the subject matter is hardware or software);" and
- "Technical support services, namely, troubleshooting of computer hardware and software problems in Class 42."
Computer Retail Services
Retail (and distributorship) services are classified in Class 35 no matter how the services are conducted. Either of the following identifications is acceptable:
- "Computerized online retail store services in the field of [specify], in Class 35."
- "Providing a website used to place online orders in the field of [specify], in Class 35."
Computer Entertainment Services
Generally, the entertainment services are classified in Class 41. The difficulty is trying to figure out what entertainment activity the applicant is conducting. Therefore, the identification "providing a website featuring entertainment" is not acceptable. Instead, one of the following may be more appropriate:
If the services comprise an "online game:"
- "Entertainment services, namely, providing a multi-user online computer game, in Class 41."
- "Providing a computer game that may be accessed network-wide by network users, in Class 41."
If the services involve "chat rooms:" "Providing online chat rooms for transmission of messages among computer users concerning [indicate field or subject of chat room], in Class 38."
If the services involve providing content: "Providing a website featuring information in the field of computer gaming entertainment, in Class 41." See TMEP §1402.11(b).
If the services involve providing a website from which a user can receive "webcasted" transmissions over the Internet: "Broadcasting (radio programs, television programs, multimedia programming, etc.) via the Internet, in Class 38."
If the services consist of providing a particular online show "webcasted" over the Internet: "Entertainment, namely a continuing [indicate type, e.g. variety, news, comedy] show broadcasted over the Internet, in Class 41."
Computer Design and Development Services
Generally, these services are in Class 42. It is important to remember that these services must be performed for the benefit of others. If an applicant is developing its own software, it is not engaging in a recognized service. (See TMEP §§1301.01 et seq. regarding activities that do not constitute services.) If the services are identified as "computer design and development services," the specimens must show that the applicant provides these services for other parties. Some acceptable identifications are:
- "Computer software design and development services for others, in Class 42."
- "Computer services, namely, creating and maintaining websites for others, in Class 42."
- "Duplication of computer programs, in Class 42."
Prior to January 1, 2002, the service of providing an online database via the Internet was classified in Class 42 if the database included a wide variety of subject matter. However, effective January 1, 2002, the subject matter or content of the online database now governs the classification of the services. Applicants must now separate the subject matter or content of the databases into their appropriate individual international classes. Acceptable identifications include:
- "Providing an online electronic database on the Internet in the field of banking, in Class 36."
- "Providing an online electronic database on the Internet in the field of business evaluations of automobile companies, in Class 35."
- "Providing an online electronic database on the Internet in the field of computer programming, in Class 42."
- "Providing an online electronic database on the Internet in the field of cosmetology, in Class 44."
In determining whether the specimens support "database provision services," look for the following clues:
- See if the specimens use words like "to access our database," "our database includes.", etc.
- Confirm that the information provided online is capable of being searched, sorted, re-arranged and indexed like a traditional database.
- If the specimens consist of merely a series of web pages, this is NOT a database. A more appropriate identification would be "providing a website on the Internet featuring information in the fields of ________, in Class ___ (class dependent on the content)."
Other common database services include the following:
- "Database development services, in Class 42."
- "Computerized database management services, in Class 35."
See TMEP §1402.11(b) regarding information services.
Miscellaneous Computer Services
Occasionally, an applicant applies for an identification such as "electronic storage and retrieval of information, in Class 35." This identification is no longer acceptable. The examining attorney should suggest wording such as: "electronic storage (or archiving) for others of [indicate subject matter, e.g. messages, data], in Class 39."
Do not use the term "data warehouse" to describe these services. A "data warehouse" is a very large database designed for fast processing of queries, projections, and data summaries, normally used by a large organization.
All online publications are classified in Class 41 no matter what the subject matter. An acceptable identification would be:
"Computer services, namely providing online [indicate specific nature of publications, e.g., magazines] in the field of [indicate subject matter of publication], in Class 41."
A column or section of an online publication would be identified as "computer services, namely, providing a [column or section] in an online [indicate type of publication] in the field of [indicate subject matter of publication]," in Class 41.
The examining attorney should verify from the specimens that the information is presented in a "publication" format. An online magazine in Class 41 must really look and act like a magazine, i.e., contain monthly or periodic articles, sections, features, advertisements, credits, etc. If it does not, a more appropriate identification would be "providing a website on the Internet featuring information in the field of ________, in Class ___" (classification dependent on the content).
If an applicant identifies its goods as "publications, namely ...," and it becomes apparent during examination that the goods are in fact online publications, the applicant may amend the identification to indicate that the goods are online publications in Class 41, since the term "publications" is broad enough to encompass both printed and online publications. On the other hand, if the applicant identifies its goods as "printed publications...," the identification cannot be amended to indicate that the goods are "online publications," because this would exceed the scope of the original identification. 37 C.F.R. 2.71(a).
1402.11(b) Information Services
Prior to January 1, 2002, the identification "providing information in a wide variety of fields" was an acceptable identification of services, particularly in the context of Internet websites. The only caveat was to make sure that the website or information services did provide information in a wide variety of fields.
Effective January 1, 2002, the "miscellaneous" phrase has been eliminated from the heading of Class 42 (see TMEP §1401.09(a)). Therefore, the examining attorney must require that the applicant indicate the fields in which it is providing information so that the service can be accurately classified. The fields may be listed somewhat broadly, but with enough specificity to allow classification. "Bundling" of the fields of information (that is, listing all fields of information but allowing the dominant or most significant field to control the classification with the other fields simply "along for the ride") is no longer acceptable.
Since information services must now be classified according to the subject matter of the information, the nature or subject matter of the information provided must be specified to allow for proper classification. For example, "information in the field of automobiles" is not sufficiently definite to allow for proper classification. If the information pertains to purchasing an automobile, then the service is classified in Class 35. If the information pertains to the care and maintenance of automobiles, the service is classified in Class 37. If the service involves insurance or financing of automobiles, then Class 36 is the proper class. Perhaps the best way to ensure that the information is classified correctly is to identify the subject matter of the service. For example, "information in the field of automobile financing" is adequate to classify the service in Class 36. Another way to clarify the classification of information services is to characterize the information itself. Thus, "providing financing information in the field of automobiles" clearly puts the service in Class 36. As with many other service identifications that require an indication of the subject matter or field, the subject matter or field does not have to be as specific as would be required if that were the service itself. However, an indication of the nature of the information must be included, either by reference to the type of information or the subject matter of the information provided, to allow for proper classification of the activity.
An applicant is not required to register in all classes in which it provides information, but may instead choose to register only the classes of the fields that are most important to it. The examining attorney will ask the applicant to indicate the fields of information to assist in classification. The applicant must decide if it wishes to (1) go forward and register the information services in all of the appropriate classes, or (2) choose the class(es) that are most important to its business, and amend the identification to delete reference to fields of information that fall into other classes. See TMEP §1401.04(b).
1402.11(c) Association Services and "Promoting the Interest of" Services
The classification of services rendered by associations was affected by the reorganization of Class 42 (see TMEP §§1401.09 et seq.). Prior to January 1, 2002, the Explanatory Notes regarding this topic for the old Class 42 included the language "services (not included in other classes) rendered by associations to their own members." This language in the old Class 42 allowed identifications of services such as "association services, namely, promoting the interest of lawyers" to be accepted in Class 42. Effective January 1, 2002, there is no reference to "services rendered by an association" in the Class Heading or Explanatory Notes for any of the service classes.
Most activities rendered by associations are easily classified in other classes, e.g., insurance services (Class 36), business services (Class 35), travel arrangements (Class 39), training and entertainment (Class 41).
Effective January 1, 2002, lobbying services and activities related or similar to lobbying activities provided by an association are classified in Class 35, because they further the business interests of the group represented by the association. Even non-business interests such as those that promote reading skills or environmental protection have a "business interest" in promoting their concerns.
1402.11(d) Charitable Services, Other than Monetary
Prior to January 1, 2002, non-monetary charitable services were classified in Class 42, regardless of the type of service being provided by the charity. Effective January 1, 2002, services are classified by the nature of the service provided, e.g., "charitable services, namely, providing shelter for the homeless" are in Class 43, like other temporary accommodation services; "charitable services, namely, providing tutoring for underprivileged students" are classified in Class 41 like other educational services. See TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.
1402.11(e) Consulting Services
Prior to January 1, 2002, all consulting services were classified in Class 42 except those relating to business (Class 35) and financial or insurance (Class 36). Effective January 1, 2002, consulting services are classified in the class of the subject matter of the service. The type of consultation or subject matter of the consultation must be set forth with adequate specificity to allow for accurate classification.
See TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.