TMEP 1401.07: Specimen Discloses Special Characteristics

October 2017 Edition of the TMEP

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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. See TMEP §1402.05(a).

Finished products are in principle classified according to their function or purpose. See TMEP §1401.02(a). When a specimen discloses that use of the identified goods is limited to a particular function or purpose, classification may be impacted. For example, orthopedic shoes are classified in Class 10 as medical apparatus, and ordinary shoes are classified in Class 25. If the specimen in an application for "shoes, in Class 25" shows that the goods are orthopedic shoes, the identification and classification must be amended to "orthopedic shoes, in Class 10." 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 industrial use are classified in Class 1, not in Class 3 where most 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 or semi-worked 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 or semi-worked materials are classified in several international classes. For example, "semi-processed plastic in sheet form" is classified in Class 17, and "unprocessed plastic in powder form" is classified in Class 1. Certain synthetic materials are in a different class from those that are natural.  For example, "unprocessed synthetic resins" are classified in Class 1 and "raw natural resins" are classified in Class 2. Usually, a specimen will disclose these characteristics of raw or semi-worked materials.

If the specimen indicates that a product is made of a particular material, the identification must specify the material composition of the goods when the goods are classified according to material composition.  See TMEP §1402.05(b) for further explanation. 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, which must be set forth in the identification:  metal ladders are in Class 6; ladders of wood or plastics are in Class 20; and rope ladders are in Class 22.