TMEP 1402.03(d): Identifying Computer Programs with Specificity

October 2017 Edition of the TMEP

Previous: §1402.03(c) | Next: §1402.03(e)

1402.03(d)    Identifying Computer Programs with Specificity

Any identification of goods for computer programs must be sufficiently specific to permit determinations with respect to likelihood of confusion.  The purpose of requiring specificity in identifying computer programs is to avoid the issuance of unnecessary refusals of registration under 15 U.S.C. §1052(d) where the actual goods of the parties are not related and there is no conflict in the marketplace. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).  Due to the proliferation and degree of specialization of computer programs, broad specifications such as "computer programs in the field of medicine" or "computer programs in the field of education" will not be accepted, unless the particular function or purpose of the program in that field is indicated.  For example, "computer programs for use in cancer diagnosis" or "computer programs for use in teaching children to read" would be acceptable.

Typically, indicating only the intended users, field, or industry will not be deemed sufficiently definite to identify the nature of a computer program.  However, this does not mean that user, field, or industry indications can never be sufficient to specify the nature of the computer program adequately.  For example, "downloadable geographical information system (GIS) software" would be acceptable.  Geographical information systems, also known in the industry as GIS, are well-defined computer applications that do not need further definition.  If the identification in the application does not adequately specify the nature of a computer program, further information may be requested.  Any questions concerning the recognition of a term of art for a computer program should be discussed with senior attorneys, managing attorneys, or other examining attorneys who are knowledgeable in the computer field.

If an applicant asserts that the computer programs at issue serve a wide range of diverse purposes, the applicant must submit appropriate evidence and/or specimens to substantiate such a broad identification of goods. See 37 C.F.R. §2.61(b); TMEP §§1402.03(b)–(c).

Generally, an identification for "computer software" will be acceptable as long as both the function/purpose and the field of use are set forth.  However, specifying the field of use is not required when the identified software has a clear function and is not field-specific/content-specific. Further, some general wording is allowed.  The following wording is acceptable:

  • (1) Computer game software.
  • (2) Computer operating programs and computer operating systems:  Software under this category comprises master control programs that run the computer itself.  They are the first programs loaded when the computer is turned on and set the standards for the application programs that run in the operating system or operating program.
  • (3) Computer utility programs:  These programs must be designed to perform maintenance work on a computer system or components thereof, such as file management (sorting, copying, comparing, listing, and searching files), as well as diagnostic and measurement routines that check the health and performance of the computer system.  Beware of identifications that read "Computer utility programs, namely, business software." - This is NOT a utility program.
  • (4) Computer software development tools:  These programs are designed to create other computer programs.  This is one of the few exceptions in which use of the term "tools" is acceptable.
  • (5) Database management software [if for general use, otherwise indicate specific field]: Software that controls the organization, storage, retrieval, security, and integrity of data in a database (an electronically stored collection of data).  Other examples:
    • Computer software for use in database management.
    • Database management software for use by financial advisors.
    • Database management software in the field of baseball cards.
  • (6) Spreadsheet software [if for general use, otherwise indicate specific field]:  Software that simulates a paper spreadsheet, or worksheet, in which columns or individual cells of numbers are summed, subtracted, multiplied, or divided with the contents of other columns or cells for budgets and plans.  Other examples:
    • Spreadsheet software for general use.
    • Computer software for use as a spreadsheet.
    • Spreadsheet software for use by budget analysts.
  • (7) Word processing programs [if for general use, otherwise indicate specific field]: Software used to create text documents. Other examples:
    • Downloadable computer software for word processing.
    • Computer programs for word processing.
  • (8) Computer-aided design (CAD) software [if for general use, otherwise indicate specific field]:  Computer-aided design software is generally used to design products.  CAD software is available for generic design or specialized uses, such as architectural, electrical, and mechanical design.  Other examples:
    • Computer-aided design (CAD) software for general use.
    • Computer-aided design (CAD) software for designing integrated circuits.
    • Computer-aided design (CAD) software for architectural use.
  • (9) Computer-aided manufacturing (CAM) software [if for general use, otherwise indicate specific field]:  Computer-aided manufacturing software automates manufacturing systems and techniques, including numerical control, process control, robotics, and materials requirements planning.  Other examples:
    • Computer-aided manufacturing (CAM) software for general use.
    • Computer-aided manufacturing (CAM) software for use in the manufacture of airplane components.
    • Computer-aided manufacturing (CAM) software for integrated circuits.
  • (10) CAD/CAM software [if for general use, otherwise indicate specific field]:  Computer-aided design/Computer-aided manufacturing software integrates functions of CAD and CAM software in that products designed by the CAD systems are directly inputted into the CAM systems for manufacture.

Examples of indefinite and unacceptable wording include the following:

  • (1) Computer programs featuring multimedia (unless the applicant specifies the content, e.g., interactive multimedia software featuring audio and video information for patients on the subject of treatments, procedures and alternatives related to dentistry).
  • (2) Computer firmware (unless the applicant specifies the function/purpose of the program, and, if the program is content or field specific, the field of use).
  • (3) Computer devices (must specify the common commercial name therefor).
  • (4) Computer accessories (must specify the common commercial name therefor).

Computer software is a product classified in International Class 9 if it is recorded on media or is downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis. However, providing on-line non-downloadable software is considered a computer service in International Class 42 because it is generally provided for use on a temporary basis. See TMEP §1402.11(a)(xii). An exception, however, is providing online or temporary use of non-downloadable game software, which is classified in International Class 41. See id.

See TMEP §1402.11(a) regarding identification and classification of computer services.