TMEP 1402.11: Identification of Services

This is the October 2015 Edition of the TMEP

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1402.11    Identification of Services

This section addresses identifications of particular types of services.

The primary 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 constitute a service as contemplated by the Trademark Act, and not merely refer to collateral or related activities associated with rendering the service. See TMEP §§1301.01-1301.01(b)(v) for information on what constitutes a service.

Example - Where a mark indicates the source of 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 indicates the source of 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.

Example - “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 an ongoing 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 online or through other means need not be mentioned.

Example - “Dinner theaters” (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.

Fashion-show services are generally classified either as promotional services rendered by the organizer of the fashion show to the businesses or groups that sponsor the event or as an entertainment service. When the record shows that the primary purpose of conducting such a fashion show 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 fashion show” or “fashion show exhibitions for commercial purposes” in Class 35. Where the fashion show is presented primarily as entertainment for the general public, the service should be identified as “entertainment in the nature of fashion shows” in Class 41.

The activities recited in the identification must constitute services as contemplated by the Trademark Act. See TMEP §§1301.01 et seq. as to what constitutes a registrable service. For example, “sales” cannot be listed as the primary activity in an identification, because the sale of one’s own goods or services is not a registrable service.

See also TMEP §§1401.09 et seq. regarding the changes in the international classification of services effective January 1, 2002.