When deciding how to describe goods and services in a trademark application, applicants often err on one side of two extremes:
- they either describe their goods/services very specifically, which may help circumvent unnecessary refusals for marks in the same general space, but could also result in an unnecessarily narrow registration that does not encompass how use may evolve; or
- they describe their goods/services broadly by category, which may result in an Office Action requiring an amendment to specify the nature of the goods/services.
The ideally formulated identification falls somewhere in between the two. A good starting point for formulating an identification is the USPTO's U.S. Acceptable Identification of Goods and Services Manual (“ID Manual”) [seen here], a constantly-evolving document that can help applicants formulate identifications for use in the U.S. and elsewhere.
Since September 1, 1973, goods and services have been classified according to the International Classification of Goods and Services, established by the Committee of Experts of the Nice Union. In 2013, the Committee of Experts began annual revisions to the Nice Classification, the most recent of which is referred to as Nice Classification, Tenth Edition, Version 2016. Revisions, including ongoing revisions affecting only U.S. applications, are found in the USPTO’s online searchable “ID Manual.” To see the most recent noteworthy changes click here, and helpful explanations of individual revisions can be found in the “Note” column.
One goal of the annual revision process is to ensure goods/services keep pace with changes in technologies. A recent example from Version 2016 illustrates that the previously acceptable descriptions “printers for use with computers” and “printers” are no longer acceptable, and such goods must now provide additional specificity as to whether they are “document printers,” “photo printers,” “printing machines for commercial or industrial use,” or “3D printers.”
Given that the functions and manners of use of these printers all vary, the revised requirement also impacts classification of the printers. Document and photo printers are classified in Class 9 with computers, while 3D printers are in Class 7. The “note” section explains that 3D printers “function as additive manufacturing machines that create or build three-dimensional solid objects by laying down successive layers of material, and thus, classified as 'machines' which is in the Class Heading for Class 7.”
Other examples of previously acceptable identifications that now must be denoted with greater specificity relate to tour, excursion, and sightseeing activities. As of the Version 2016 changes, the identifications “conducting travel tours” and “organizing excursions for recreational purposes” are no longer acceptable, and must now also indicate whether the services are primarily a transport-based activity in Class 39, or a guide-based (or guided) activity in Class 41. Therefore, use of key words, transport/transportation or guide/guided, distinguishes the nature of the services, allowing proper classification and informed consideration by the USPTO.
Although it may seem like the revisions typically narrow the scope of protection accorded registrations, these revisions can also provide opportunities for applicants. For example, the USPTO recently revised the ID Manual in a way that could encompass technology advances that occur in the recording industry. For example, the ID Manual no longer requires applicants to identify the media upon which their audio and visual works are recorded, and now allows the flexible wording "audio and video recordings featuring [subject matter]" – which presumably covers any possible form these recordings might take in the future.
Another recent example, discussed here previously, manifested as the "Pilot Program to Allow Amendments to Identifications of Goods and Services in Trademark Registrations Due to Technology Evolutions." The USPTO recognized the challenges evolving technology poses to registrants, and implemented a pilot program as a way to allow registrants to extend their ownership to the transformed goods previously covered by the same registered mark.
Finally, applicants should keep in mind that the USPTO considers suggestions from the public for identifications or recitations to add to the ID Manual, particularly with regard to new technology. To suggest an addition to the ID Manual submit your request via e-mail to firstname.lastname@example.org.
This article appeared in the April 2016 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.