RESPONSE TO COMMENTS ON USPTO’S PROPOSALS FOR
CHANGES TO THE NICE CLASSIFICATION
COUNTRY / ORGANISATION: USPTO
DATE: January 2015
USPTO thanks the International Bureau (“IB”), Japanese Patent Office (“JPO”), German Patent and Trade Mark Office, Swiss Federal Institute of Intellectual
Property (“Swiss Institute”), and Benelux Office for Intellectual Property (“BOIP”) for the courtesy of reviewing USPTO’s proposals for changes to the Nice
Classification and for their helpful comments.
Pursuant to comments from our colleagues, USPTO withdraws or modifies certain proposals as shown in red-line form on the chart below. Specifically,
USPTO withdraws the proposals in LP 6.01, 21.05, 21.06, 21.07, 25.10, and 25.11. LP 5.01, 5.02, 5.03, 5.04, 5.05, 7, 9, 10, 11.04, 12, 15.02, 19, 20, 27.01,
and 27.02 have been modified as indicated below. USPTO provided responses to comments for LP 2.01, 2.02, 3.01, 3.03, 14.01, 14.02, 23, 25.04, 25.06,
25.07, and 26. In light of comments from the IB, USPTO requests the addition of proposal 3.04, if feasible. Annex 3 is withdrawn, and Annex 4 is modified by
deleting the last paragraph relating to LP 25.10 and LP 25.11. A new Annex 5 is inserted to explain the rationale for classifying smartwatches in Class 9 (in
connection with LP 22.02 and LP 23), and a new Annex 6 is inserted to provide comments on writing services (in connection with LP 24.01, 24.02, 24.03,
24.04, and 24.05). USPTO responses to comments for LP 1.01-1.18 are provided in a separate document posted to the E-Forum under Project NI040, Anx 8.
Where no response or remark appears, the proposal or annex remains as originally submitted.
Class
Basic
No.
Place
Action
New/Modified entry
New class
LP
1.011.18
USPTO Response to Comments
See E-Forum, Project NI040, Anx 8 for
comments and/or modifications in
connection with LP 1.01-1.18.
2
Class
Basic
No.
Place
Action
New/Modified entry
New class
LP
2.01
18
Add
USPTO Response to Comments
The IB inquired as to whether luggage
tags of paper or cardboard would be
classified in Class 16 or 18. BOIP
indicated their preference for the
material content of the tags to form
part of the indication. USPTO seeks to
simplify the classification of luggage
tags so as to classify all luggage tags
in Class 18 regardless of material
content. Per the Class 18 Explanatory
Note, Class 18 includes “mainly …
travel goods not included in other
classes.”
Luggage tags
Does the IB view luggage tags as
analogous to labels? MGS includes
labels of plastic in Class 16 and
luggage tags of plastic in Class 18.
Wouldn’t OHIM’s proposals to delete
“goods made from these materials …”
from the Class 16 and 18 headings
preclude classification of the goods
based on material content?
3
Class
Basic
No.
Place
Action
New/Modified entry
Class 18 includes mainly
leather, leather imitations,
travel goods not included in
other classes and saddlery.
This Class includes, in
particular:
18
Explanatory
Note
Change
– luggage tags.
This Class does not include,
in particular:
– clothing, footwear,
headgear (consult
the Alphabetical List
of Goods).
New class
LP
2.02
USPTO Response to Comments
BOIP and JPO responded that this
proposal could be redundant of LP
2.01. USPTO included this proposal to
make clear that all luggage tags are in
Class 18 regardless of content.
See comments above.
4
Class
Basic
No.
Place
Action
New/Modified entry
New class
LP
3.01
28
Add
Mouth guards [sporting
articles]
USPTO Response to Comments
The IB inquired as to whether there are
other types of teeth protectors or
mouth guards than those used for
sporting or dental purposes. Research
indicates that mouth guards (also
called “protectors”) are mainly used for
athletic or dental purposes. BOIP, the
IB, and the Swiss Institute indicated
that they would classify the goods in
Class 9. USPTO submits that these
goods should be appropriately divided
between Class 10 and Class 28
according to their respective purposes
as dental apparatus or sporting
articles.
See comments to LP 3.03 and 3.04
below.
28
Add
Head guards [sporting
articles]
3.02
5
Class
Basic
No.
Place
Action
New/Modified entry
New class
LP
3.03
9
090414
Change
Teeth protectors for protection
against accidents
USPTO Response to Comments
BOIP and the Swiss Institute remarked
that the current proposal is not
necessary. USPTO proposed to
change “Teeth protectors” (Basic No.
090414) to “Teeth protectors for
protection against accidents” to
distinguish teeth protectors in Class 9
from those used for sporting purposes
or for dental use. For example, see
http://www.walgreens.com/store/c/thedoctor's-advanced-comfortnightguard/ID=prod3908900-product
(“Dental protector for nighttime teeth
grinding (bruxism).”). As worded, the
current indication “Teeth protectors” is
broad enough to encompass, for
example, dental apparatus appropriate
to Class 10.
The IB inquired whether “teeth
protectors/mouth guards for use
against teeth grinding (or for dental
purposes)” should be added in Class
10. Accordingly, USPTO is requesting
the addition of “Teeth protectors for
dental purposes,” in Class 10 as LP
3.04 which further demonstrates the
need for clarification of Basic No.
090414.
See comments in LP 3.01 and 3.04.
6
Class
Basic
No.
Place
Action
New/Modified entry
New class
LP
3.04
36
2
2
360011
020090
020092
Add
Teeth protectors for dental
purposes
Change
Financial calculation and
payment of taxes, duties and
excise by customs brokers
Change
Change
See comments to LP 3.01 and 3.03
above.
Alternatively, USPTO proposes “Mouth
guards for dental purposes” in Class
10. “Guards” or “protectors” are used
interchangeably in the industry. See,
e.g., http://www.webmd.com/oralhealth/guide/mouth-guards.
10
4
5.01
Pursuant to comments by the IB and
BOIP, USPTO modifies its original
proposal from” Metals in powder form
for painting, decorating, printing, and
art*” to “Metals in powder form for
painting, decorating, printing, and
artists’ use,” in Class 2. This
modification addresses the Swiss
Institute’s concerns that “art” is broader
than the original term “artists” and the
IB’s comments regarding appropriate
use of the asterisk in the Alphabetical
List.
5.02
Pursuant to comments by the IB and
BOIP, USPTO modifies its original
proposal from “Metal foil for painting,
decorating, printing, and art*” to “Metal
foil for painting, decorating, printing,
and artists’ use,” in Class 2.
Metals in powder form for
painting, decorating, printing,
and artists’ use
Metal foil for painting,
decorating, printing, and
artists’ use
USPTO Response to Comments
7
Class
2
Basic
No.
Place
Class
Heading
Action
New/Modified entry
Change
Paints, varnishes, lacquers;
preservatives against rust and
against deterioration of wood;
colorants; mordants; raw
natural resins; metals in foil
and powder form for painting,
decorating, printing, and
artists’ use
Class 6 includes mainly
unwrought and partly wrought
common metals as well as
simple products made of
them.
New class
LP
5.03
Pursuant to comments by the IB and
BOIP, USPTO modifies its original
proposal to suggest replacing the
wording “metals in foil and powder
form for painters, decorators, printers
and artists” in the Class 2 Heading with
“metals in foil and powder form for
painting, decorating, printing, and
artists’ use.”
5.04
Pursuant to comments by the IB and
BOIP, USPTO modifies its original
proposal to suggest replacing the
wording “metals in foil and powder
form for painters, decorators, printers
and artists (Cl. 2)” in the Class 6
Explanatory Note with “metals in foil
and powder form for painting,
decorating, printing, and artists’ use
(Cl. 2).”
5.05
Pursuant to suggestions from JPO,
USPTO modifies its original proposal
from “Metals in foil or powder form for
3D printing” to “Metals in foil or powder
form for 3D printers” for clarity.
6.01
Pursuant to the comments from the
Swiss Institute, the USPTO withdraws
this proposal.
This Class does not include,
in particular:
6
6
Explanatory
Note
Change
Add
USPTO Response to Comments
–
bauxite (Cl. 1);
–
mercury, antimony,
alkaline and alkaline-earth
metals (Cl. 1);
–
metals in foil and
powder form for painting,
decorating, printing, and
artists’ use (Cl. 2).
Metals in foil or powder form
for 3D printers
8
Class
Basic
No.
Place
Action
New/Modified entry
37
Laying of cable
39
Rental of tractors
45
Personal wardrobe styling
services
New class
LP
6.02
7
9
Pursuant to comments received from
the Swiss Institute, the USPTO
modifies this proposal to Silicon
carbine [raw material].
10
Pursuant to comments received from
the IB, JPO, and the Swiss Institute,
USPTO modifies the classification of
the original proposal to Class 8.
Emery boards
8
Add
Joysticks for use with
computers [not for computer
games]
11.01
9
12
Add
Vehicle joysticks
11.02
28
Add
Joysticks for games
11.03
11.04
7
Add
Joysticks, being parts of
machines, for controlling
machines, motors or engines
[not for game machines]
12
41
Add
Organization of in-person
educational forums
Pursuant to comments from BOIP,
USPTO modifies the classification of
the original proposal to Class 39.
8
Silicon carbide [raw material]
1
USPTO Response to Comments
Pursuant to comments from BOIP,
USPTO modifies its original proposal
from “Joysticks for controlling
machines, motors or engines [not for
game machines]” to “Joysticks, being
parts of machines, for controlling
machines, motors or engines [not for
game machines].”
Pursuant to comments from the IB and
BOIP, USPTO modifies its original
proposal from “Providing in-person
educational forums” to “Organization of
in-person educational forums.”
9
Class
Basic
No.
16
160361
Place
Action
Change
New/Modified entry
Document holders for
stationery purposes
New class
LP
13
14.01
35
Add
Providing ratings and reviews
of restaurants for commercial
purposes
USPTO Response to Comments
Opinions on the proper classification of
these services (i.e., LP 14.01 and
14.02) are mixed. The IB has indicated
that these services should be classified
as information services in Class 43,
pursuant to item (c) of the General
Remarks (which states that “[s]ervices
that provide advice, information or
consultation are in principle classified
in the same classes as the services
that correspond to the subject matter
of the advice, information or
consultation…”), unless, according to
the IB, these services imply rate
comparison information, in which case
the proper class would be Class 35 by
analogy to Basic No. 350091 for “price
comparison services” in Class 35.
BOIP has indicated that it is not sure
whether classification of these services
should be split into different classes,
based on commercial purposes and
other purposes, and has also indicated
that these services could be classified
in Class 42 as a type of quality
appreciation/quality control services.
JPO has stated that these services
should be classified in Class 43,
pursuant to the TM5 ID list entry for
“Providing reviews of restaurants and
bars” in Class 43. However, the
USPTO respectfully advises JPO that
10
Class
Basic
No.
Place
Action
New/Modified entry
New class
LP
USPTO Response to Comments
“Providing reviews of restaurants and
bars” in Class 43 was removed from
the TM5 ID list on November 19, 2014.
As indicated in the USPTO’s original
explanation of these proposals,
“Providing ratings and reviews of
restaurants for commercial purposes”
refers to ratings provided by
companies such as
http://www.zagat.com/ and
http://www.angieslist.com/, said ratings
being in the nature of commercial
information provided to consumers
about the goods or services of others
for a business purpose. (Such services
may or may not include price
comparison information.) *Comment
continued below in 14.02.*
14.02
41
Add
Providing ratings and reviews
of restaurants for
entertainment or educational
purposes
Providing ratings and reviews of
restaurants for entertainment or
educational purposes” refers to ratings
and reviews provided on websites
such as http://www.yelp.com/, said
ratings and reviews being in the nature
of information provided to the public for
entertainment or educational purposes
concerning the goods or services of
others.
In response to the IB and JPO’s
comments, the USPTO respectfully
inquires as to the proper classification
of services such as the following, if the
provision of reviews (and ratings) is
11
Class
Basic
No.
Place
Action
New/Modified entry
New class
LP
USPTO Response to Comments
treated as provision of information
services, regardless of particular
purpose:
“Providing reviews of wine.”
“Providing reviews of sports cars.”
The USPTO believes that, if treated as
information services, providing reviews
of certain goods, such as the foregoing
goods, could encompass services that
are classified in more than
international class.
For example, providing reviews of wine
could include Class 35 pricing
information, Class 36 financial
evaluation information, Class 43 food
and beverage preparation information,
Class 42 quality control information,
etc. Reviews of sports cars could
include Class 35 pricing information,
Class 36 financial evaluation
information, Class 37 repair and
maintenance information, Class 39
transportation information, Class 45
safety information, etc.
9
090121
Transfer
11
15.01
12
Class
Basic
No.
Place
Action
New/Modified entry
This Class does not include,
in particular:
Explanatory
Note
11
New class
LP
15.02
– steam producing apparatus
(parts of machines) (Cl. 7);
Change
This Class includes, in
particular:
– electrically heated clothing
29
Add
29
Add
Candied nuts
16.01
Sugared nuts
16.02
45
450202
Delete
17.01
45
450196
Change
Baggage screening for
security purposes
17.02
42
Add
Motor vehicle inspections
17.03
42
Add
Mechanical inspections
17.04
42
Add
Building inspections
17.05
35
Add
Appointment scheduling
services [office functions]
18.01
Add
Appointment reminding
[confirming] services [office
functions]
18.02
35
USPTO Response to Comments
Pursuant to comments from BOIP,
USPTO modifies its original proposal
that the wording “This Class does not
include, in particular: - electrically
heated clothing (Cl. 9)” be deleted from
the Class 11 Explanatory Note to, in
addition, add the following language to
the Class 11 Explanatory Note: “This
Class includes, in particular: electrically heated clothing.”
13
Class
Basic
No.
35
Action
Add
39
28
Place
Add
280108
New/Modified entry
New class
LP
19
Pursuant to comments from JPO,
USPTO modifies its original proposal
from “Administration of incentive
reward programs [for commercial or
advertising purposes]” OR
“Administration of consumer loyalty
programs [for promotional purposes]”
to “Administration of consumer loyalty
programs [for advertising or
promotional purposes].”
20
Pursuant to comments from BOIP,
USPTO modifies its original proposal
from “Collecting of recyclable items for
others” to “Collecting of recyclable
goods for others [transportation].”
Administration of consumer
loyalty programs [for
advertising or promotional
purposes]
Collecting of recyclable goods
for others [transportation]
Transfer
8
USPTO Response to Comments
21.01
7
Add
Power-operated ski edge
sharpening tools
21.02
8
Add
Hand-operated ski edge
sharpening tools
21.03
21
Add
Ski wax brushes
21.04
14
Class
Basic
No.
Place
Action
New/Modified entry
9
Add
Smartglasses
9
Add
Smartwatches
New class
LP
USPTO Response to Comments
21.05
BOIP agreed with this proposal, but did
not indicate its rationale for classifying
the dart point sharpeners in Class 28
(and distinguishing between the dart
point sharpeners and the umpire
brushes and chess timers). JPO did
not support this proposal. The Swiss
Institute indicated that the proposal
was overbroad and included goods in
Classes 7 and 8 (depending on
whether they are power-operated or
hand-operated). Considering the
comments on this proposal and the
related proposals, LP 21.06 and 21.07,
USPTO withdraws Annex 3 and this
proposal.
21.06
BOIP, JPO, and the Swiss Institute
classify these goods in Class 21 based
on their function as “Brushes” (Basic
No. 210014). As noted above, USPTO
withdraws this proposal.
21.07
BOIP and the Swiss Institute classify
these goods in Class 9. JPO classifies
these goods in Class 14. As noted
above, USPTO withdraws this
proposal.
22.01
22.02
See Annex 5
15
Class
Basic
No.
Place
Action
New/Modified entry
New class
LP
23
12
Add
Driverless cars [autonomous
cars]
USPTO Response to Comments
BOIP suggests the wording
“Automatically guided cars.” USPTO
disagrees with BOIP’s suggested
alternative because, based on an
internet search, the term does not
appear to be generic or commonly
used in the automobile industry.
See Annex 5
24.01
See Annex 6
24.02
See Annex 6
24.03
See Annex 6
24.04
See Annex 6
24.05
See Annex 6
42
Add
Technical writing services
45
Add
Personal letter writing
services
41
Delete
41
Add
Song writing services
41
Add
Screenplay writing services
29
Add
Milk substitutes
25.01
Change
Almond-based beverage
25.02
Change
Almond milk for culinary
purposes
25.03
32
29
320032
290188
25.04
29
32
320046
Add
Almond milk [milk substitute]
Change
Peanut-based beverage
25.05
The Swiss Institute notes that this
proposal is covered by LP 25.01.
However, USPTO maintains the
proposal to make clear the
classification of the goods.
16
Class
29
Basic
No.
Place
Action
Add
New/Modified entry
New class
LP
USPTO Response to Comments
25.06
The Swiss Institute notes that this
proposal is covered by LP 25.01.
However, USPTO maintains the
proposal to make clear the
classification of the goods.
25.07
The Swiss Institute notes that this
proposal is covered by LP 25.01.
However, USPTO maintains the
proposal to make clear the
classification of the goods.
Peanut milk [milk substitute]
29
Add
Coconut milk [milk substitute]
29
Add
Coconut milk for culinary
purposes
25.08
32
Add
Coconut-based beverage
25.09
BOIP and JPO objected to the
proposed transfer. The Swiss Institute
did not object. Considering the
comments, USPTO withdraws the
proposal.
BOIP and JPO objected to the
proposed transfer. The Swiss Institute
did not object. Considering the
comments, USPTO withdraws the
proposal.
17
Class
Basic
No.
Place
Action
New/Modified entry
New class
LP
26
20
Add
Birdhouses
USPTO Response to Comments
BOIP indicated that this proposal is
covered by the existing indication
“Nesting boxes,” nichoirs, (Basic No.
200109). The Swiss and JPO
supported this proposal. The Swiss
indicated that the French version of the
new indication should be nichoirs pour
oiseaux.
USPTO acknowledges that the
Alphabetical List already includes
“Birdcages” (Basic No. 210059) in
Class 21. The co-existence of “Nesting
boxes” in Class 20 and “Birdcages” in
Class 21 creates confusion as to the
proper classification of birdhouses.
This proposal is intended to resolve
the confusion and promote consistent
classification of birdhouses among
national offices.
18
Class
Basic
No.
Place
Action
New/Modified entry
New class
LP
27.01
14
Add
USPTO Response to Comments
USPTO amends this proposal to
correspond with the IB’s proposals to
amend Basic Nos. 060221 and
200294. This proposal was originally
made as a modification to Basic No.
140162 in LP 27.02, but the IB noted
that it represented a change of concept
from that basic number.
Split rings are rings having two helical
turns used to hold keys and are
appropriate to Class 14 based on the
material content of the goods.
Split rings of precious metal
for keys
JPO indicated that they would support
“Rings of precious metal for keys” as
an addition but suggested the
proposed amendment to LP 27.02
rendered the classification of “key rings
[trinkets or fobs]” unclear. See
Comments to LP 27.02.
27.02
18
140162
Transfer
and
Change
Key rings / Key chains
USPTO initially proposed changing
“Key rings [trinkets or fobs]” to “Rings
of precious metal for keys” in Class 14
(LP 27.02) and adding “Key rings / Key
chains” to Class 18 (LP 27.01). See
comments to LP 27.01. USPTO now
proposes changing “Key rings [trinkets
or fobs]” to “Key rings / Key chains”
and transferring the goods to Class 18.
Classification in a single class would
simplify classification for the relevant
manufacturers.
BOIP and the Swiss Institute indicated
that key rings and chains are classified
19
Class
Basic
No.
Place
Action
New/Modified entry
New class
LP
USPTO Response to Comments
by material content. The Swiss
Institute and BOIP suggested that
Basic No. 140162 be amended to the
following, respectively: “key trinkets
and fobs” and “Rings and chains of
precious metal for keys.”
The bracketed wording creates
ambiguity as to the precise nature of
the goods. Are the goods key rings
sold together with trinkets or fobs or
are they merely fobs or trinkets for use
on key rings? The Class 26
Explanatory Note was amended at the
last Committee of Experts meeting to
include “charms, other than for
jewellery” in Class 26 as a transfer.
Thus, key fobs and trinkets in the
nature of charms for key chains would
be appropriate to Class 26 as a
transfer. Keychain fobs may also be in
the nature of “a small electronic device
that fits in a pocket and locks or opens
a lock on a door, especially a car
door.”
http://www.macmillandictionary.com/di
ctionary/american/fob_2; see, e.g.,
http://www.gatehousesupplies.com/Pro
ductDetails.asp?ProductCode=1346LN
SSN&click=2&gclid=CNqr8_rHtcMCFe
Xm7AodGwUAfA,
http://www.plumbersurplus.com/Prod/K
wikset-926-KEVO-FOB-Kevo-KeyFOBAccessory/312076/Cat/1568?gclid=CK
_K0ZXItcMCFY82gQod3xQAvw. Key
20
Class
Basic
No.
Place
Action
New/Modified entry
New class
LP
USPTO Response to Comments
fobs in the nature of remote controls
are not appropriate to Class 14.
Annex 1 - Transfer Only of Table Cutlery [knives, forks and spoons] also known as
Tableware [knives, forks and spoons] from Class 8 to Class 21
Based on discussions held during the 24th session of the Committee of Experts in Geneva from April 28 to May 2, 2014, on Project CE 242, Annex 3, the
USPTO submits proposed changes to the Class 8 and Class 21 Headings and Explanatory Notes, Class 14 Explanatory Note and related additions,
modifications, transfers and deletions of indications involving only the transfer of table cutlery [knives, forks and spoons], also known as tableware [knives,
forks and spoons], from Class 8 to Class 21.
Annex 2 – Resubmission of proposal to transfer “socks, electrically heated” based on prior study
These proposals seek to provide a solution that resolves the outstanding issue of the proper classification of electrically heated clothing; specifically, by
classifying all electrically heated clothing, whether or not for life-saving purposes, in Class 11, pursuant to the Class 11 Class Heading, “Apparatus for lighting,
heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.”
ALPHABETICAL LIST ENTRIES AT ISSUE:
Current Alphabetical List
Entry
Socks, electrically heated
Footmuffs, electrically heated
Footmuffs, not electrically
Current Alphabetical List Classification
Class 9
Class 11
Class 25
21
heated
Electrically-heated socks are clothing socks that are worn for the purpose of relieving cold feet by electrically providing a continuous direct heat source that warms the feet.
Footmuffs, not electrically heated, are muffs used to keep the feet warm. (See: http://www.collinsdictionary.com/dictionary/english/footmuff)
Footmuffs, electrically heated are muffs for the feet that are used for relieving cold feet by electrically providing a continuous direct heat source that warms the feet.
Because “footmuffs, not electrically heated” and “footmuffs, electrically heated” are muffs that envelope both feet in a pouch, footmuffs cannot be worn with shoes or while
walking/participating in activities that require walking. It is also noted that, in the UK and other European countries, the term “footmuffs” is often construed as referring to the
following particular goods for infants:
22
footmuff (plural footmuffs)
1. (UK) A cover for a baby's feet or legs which attaches through the harness of a pushchair, stroller, or travel system.
http://en.wiktionary.org/wiki/footmuff
The current Alphabetical List classification inconsistencies can be rectified by classifying all electrically-heated clothing, whether or not for life-saving purposes,
in Class 11, pursuant to the Class 11 Class Heading, which includes “Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying,
ventilating, water supply and sanitary purposes.” However, it is noted that the 10th Edition Class Heading for International Class 11 includes “Apparatus for
lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes,” with the following exception: “Electrically
heated clothing (Cl. 9).” Accordingly, this solution requires (1) that the Class 11 Class Heading be amended to delete the wording “This Class does not include,
in particular: - electrically heated clothing (Cl. 9)” and (2) that “socks, electrically heated” be transferred to Class 11.
It should be noted that, while this solution does not take into account the practice of classifying goods that have a particular life-saving purpose in Class 9, the
USPTO’s research does not evidence the common existence of any electrically heated clothing that serves a Class 9 life-saving purpose. The most
commonly-found item of protective clothing that prevents or protects the wearer from a life-threatening condition (such as hypothermia) that is related to
exposure to cold temperatures is the “immersion suit,” which is designed to prevent or protect the wearer from exposure to cold water temperatures.
Immersion suits are not electrically heated because they are designed for use in water:
23
http://www.landfallnavigation.com/immersionsuits.html
Further, it is noted that “Electrically heated carpets” appear in the Nice Alphabetical List (Basic No. 110310) in Class 11, and “Blankets, electric, not for
medical purposes” appear in the Nice Alphabetical List (Basic No. 110305) in Class 11. The classification of both electrically heated carpets and electrically
heated blankets in Class 11 supports the principle that goods that have a heating or warming purpose are properly classified in International Class 11, and this
principle upholds the proposed USPTO solution of classifying clothing that is electrically heated in Class 11.
Annex 4
This group of proposals establishes a framework for classifying milk substitutes.
The U.S. proposes classifying any food/beverage-type goods described as “milks” in Class 29 as milk substitutes. Additionally, all milk substitutes should be
classified in Class 29 notwithstanding the ultimate purpose of the goods. This proposal is consistent with the existing Nice Alphabetical List indications “Milk,”
“Soya milk [milk substitute],” and “Condensed milk” in Class 29 (Basic Nos. 290039, 290163, and 290180, respectively). Beverages that are not intended for
use as milk substitutes should not be described as “milks.” Instead, those goods should be characterized based on their primary components, e.g., Almondbased beverages and Peanut-based beverages in Class 32. (This principle does not apply to cosmetic or pharmaceutical-type “milks,” e.g., “Almond milk for
cosmetic purpose” (Basic No. 030169), “Milk of almonds for pharmaceutical purposes” (Basic No. 050300). This principle is limited to food/beverage-type
goods characterized as “milks.”)
Milk is defined as “a white liquid that comes from cows, goats, and sheep, which people drink and use in cooking,” or “a white liquid that some plants such
as the coconut produce.”i Milk may be consumed as a beverage from a cup or glass, as a component of a meal, such as breakfast cereal and milk, or it may
be consumed as an ingredient in a prepared entrée, such as potato soup.ii See illustrations below.
24
Soya milk is defined as “a white liquid from soy beans, used as a drink and in cooking”iii and “[t]he liquid obtained by suspending soybean flour in water,
used as a fat-free substitute for milk”.iv NCL 10-2014 includes “Soya milk [milk substitute]” in Class 29. This milk substitute may also be consumed as a
beverage from a cup or glass, as a component of a meal, such as breakfast cereal and soy milk, or it may be consumed as an ingredient in a prepared entrée,
such as creamy tomato soup.v See illustrations below.
While “Milk” and “Soya milk [milk substitute]” are classified in Class 29, “Milk of almonds [beverage]” and “Peanut milk [non-alcoholic beverage]” are classified
in Class 32 (Basic Nos. 320032 and 320046, respectively). Additionally, effective January 1, 2015, “Rice milk [milk substitute],” “Milk of almonds for culinary
purposes,” and “Peanut milk for culinary purposes,” will be added to the Alphabetical List in Class 29.
The existing indications cause confusion, and the addition of the new indications will cause further confusion, because soya milk, almond milk, peanut milk,
and rice milk all function as milk substitutes. Yet, two of the milk substitutes are classified in Class 29, and two of the milk substitutes are classified in Class 32.
Soya milk, almond milk, peanut milk, rice milk, and others (such as coconut milk, oat milk, and hemp milk) are packaged and marketed in the same manner,
travel in the same channels of trade, and would be encountered by the same consumers. See illustrations of packaged milk substitutes below.
25
There are no qualitative differences between “Milk of almonds for culinary purposes” in Class 29 and “Milk of almonds [beverage]” in Class 32. (Unlike
“Condensed milk” in Class 29, which is a sweet, thick version of cow’s milk typically used as an ingredient in cooking desserts,vi “Milk of almonds for culinary
purposes” is not a concentrated version of almond milk.). In other words, the almond milk that consumers purchase at the supermarket for use as a beverage
is the same almond milk that consumers purchase as the supermarket for use in baking muffins, cake, and cookies, for example. vii Therefore, milk of almonds
and/or almond milks should be classified in Class 29 as milk substitutes. The same principles apply to the other various types of milks, including soya milks,
peanut milks, rice milks, etc.
USPTO proposes the following changes to the NCL10-2014 (and pending additions) and new additions to make clear that any food/beverage-type goods
described as “milks” are classified in Class 29 as milk substitutes, and all milk substitutes are classified in Class 29 notwithstanding the ultimate purpose of the
goods, and. USPTO also proposes changing the wording “Milk of almonds” to “Almond milk” consistent with the existing indication for “Soya milk [milk
substitute],” and others.
029
Add
Milk substitutes
See Annex 4
032
320032
Change
Milk of almonds [beverage]
Almond-based beverage
See Annex 4
029
290188
Change
Milk of almonds for culinary
purposes
Almond milk for culinary
purposes
See Annex 4
Almond milk [milk substitute]
See Annex 4
Peanut-based beverage
See Annex 4
029
032
Add
320046
Change
Peanut milk [non-alcoholic
beverage]
26
029
Add
Peanut milk [milk substitute]
See Annex 4
029
Add
Coconut milk [milk substitute]
See Annex 4
029
Add
Coconut milk for culinary
purposes
See Annex 4
032
Add
Coconut-based beverage
See Annex 4
Annex 5
JPO, BOIP, and the Swiss Institute described different approaches to classifying smartwatches. Specifically, JPO supported the USPTO’s proposal to classify
smartwatches as wearable computers in Class 9. BOIP suggested that the term smartwatches is overbroad, and indicated that these goods may be classified
in either Class 9 or Class 14 depending on the primary function of the goods. The Swiss Institute classifies smartwatches in Class 14. The diverse
classification practices among national trademark offices highlight the need to amend the Alphabetical List to provide definitive guidance.
The IB asked whether any goods having computer functionality or internet connectivity would be classified in Class 9. Under the current guidance, the answer
is no, and USPTO proposed both “Smartwatches” in Class 9 and “Driverless cars [autonomous cars]” in Class 12 to illustrate precisely this point. Although the
Nice Classification requires classification of computers in Class 9, see Basic No. 090372, goods having automatic or computerized features must be classified
according to their primary function consistent with the General Remarks even if their primary function is initiated, guided, or driven by a computer.
Smartwatches are wearable computers (capable of indicating the time of day) and should be classified in Class 9. “Driverless cars [autonomous cars],” on the
other hand, function as apparatus for locomotion by land, and those goods are classified in Class 12 based on their primary function even though their
function is initiated and guided by a computer.
Smartwatches are not merely “chronometric instruments” (Basic No. 140030) for measuring time in Class 14. Smartwatches do not travel in the same
channels of trade as clocks and watches and other chronometric instruments, and they are not commonly sold by jewelers or watchmakers. Smartwatches are
wearable computers sold by retailers offering computers, smartphones, smartglasses, and other technology. See, e.g.,
http://www.apple.com/watch/overview/ (the Apple® smartwatch is not yet available, but an overview appears on the Apple® website),
http://www.bestbuy.com/site/smart-watches-accessories/smart-watches/pcmcat321000050004.c?id=pcmcat321000050004. Moreover, smartwatches function
in connection with smartphones or other wireless devices and, in most cases, maintain a connection with and receive data from those devices.
http://www.consumerreports.org/cro/2014/02/smart-watch-review-is-this-a-must-have-gadget/index.htm.
Desktop computers, tablet computers, and smartphones measure and indicate the time of day, but consumers do not consider those goods to be
chronometric instruments in Class 14 because the clock or time-telling feature of the computer or smartphone is ancillary to the primary function of the goods.
Similarly, smartwatches primarily function as wearable computers, the clock or time-telling featuring of the computer is ancillary, and the smartwatches should
be classified in Class 9.
27
Annex 6
USPTO proposes a framework for classification of writing services based on the nature of the writing activity.
The Alphabetical List currently includes “writing of publicity texts” (Basic No. 350099) and “writing of text, other than publicity texts” (Basic No. 410184). The
current classification guidance appears to limit the classification of writing services to Classes 35 and 41. In other words, a broad interpretation of the existing
Alphabetical List entries requires classification of any writing service in either Class 35 or Class 41.
However, OHIM’s TM Class, the USPTO ID Manual, and the MGS Manager include “Personal letter writing services” (or similar wording) in Class
45. Additionally, TM Class and the USPTO ID Manual include “Technical writing for others” (or similar wording) in Class 42. The widespread practice of
classifying certain writing services in classes other than Class 35 and Class 41 indicate that the national offices are narrowly interpreting the wording “writing
of text, other than publicity texts” in Class 41.
USPTO’s proposals to delete “writing of text, other than publicity texts” from Class 41 and add “Song writing services” and “Screenplay writing services” in
Class 41 are intended to replace vague wording with more specific wording. Additionally, USPTO’s proposals to add “Technical writing services” in Class 42
and “Personal letter writing services” in Class 45 are intended to memorialize common classification practice and promote uniform classification practices
among national offices.
Although BOIP and the Swiss Institute indicated a preference to maintain the current classification scheme, which requires classification of writing services in
either Class 35 or Class 41, the USPTO is maintaining its proposals to provide a clear framework for classification of writing services. USPTO looks forward to
the discussion at the upcoming Committee of Experts meeting.
i
http://www.macmillandictionary.com/dictionary/american/milk
http://allrecipes.com/recipe/old-fashioned-potato-soup/
iii http://www.macmillandictionary.com/dictionary/american/soy-milk
iv http://www.oxforddictionaries.com/us/definition/american_english/soy-milk
v http://silk.com/recipes/creamy-tomato-soup
vi Condensed milk is cow’s milk from which the water has been removed (resulting in a thick consistency) and to which sugar has been added.
https://www.ahdictionary.com/word/search.html?q=condensed%20milk. Condensed milk is typically used as an ingredient in cooking desserts.
http://www.eaglebrand.com/products/sweetened-condensed-milk
vii http://www.yummly.com/recipes/baking-almond-milk
ii