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Chapter 1400

Classification and Identification of Goods and Services

1401 Classification

1401.01 Statutory Authority

1401.02 International Trademark Classification Adopted

1401.02(a) Headings of International Trademark Classes

1401.02(b) Short Titles for International Trademark Classes

1401.02(c) International Alphabetical List

1401.03 Designation of Class

1401.03(a) Designation of Class by Applicant Normally Initially Accepted in Applications Under §§1 and 44

1401.03(b) Designation of Class by USPTO When Class Number Is Not Designated or Is Inaccurate in Application Under §1 or §44

1401.03(c) Failure to Classify May Delay Action in Applications Under §§1 and 44

1401.03(d) Classification Determined by World Intellectual Property Organization in §66(a) Applications

1401.04 Classification Determines Number of Fees

1401.04(a) Prior United States Classification System

1401.04(b) Limiting Goods and Services to the Number of Classes for Which Filing Fees Are Paid

1401.05 Criteria on Which International Classification Is Based

1401.05(a) Identification and Classification of Kits and Gift Baskets

1401.05(b) Medical vs. Non-Medical Goods

1401.06 Specimen(s) as Related to Classification

1401.06(a) Specimen Discloses Special Characteristics

1401.07 Classification and Plurality of Uses

1401.08 Classification and the Identification of Goods and Services

1401.09 Changes in Practice Based on the Restructuring of International Class 42 in the 8th Edition of the Nice Agreement

1401.09(a) Elimination of “Miscellaneous Class Designation”

1401.10 General Summary of Major Changes in Practice Based on the 9th Edition of the Nice Agreement

1401.10(a) Legal Services Transferred to International Class 45

1401.10(b) Goods Made of Precious Metal are Classified According to Their Function

1401.10(c) Transfer of Aquaria and Related Items

1401.11 Implementation of Changes to the Nice Agreement

1401.12 Effective Date of Changes to USPTO ID Manual

1402 Identification of Goods and Services

1402.01 Specifying the Goods and/or Services - in General

1402.01(a) General Guidelines for Acceptable Identifications of Goods or Services

1402.01(b) Identification of Goods and Services in a §44 Application

1402.01(c) Identification of Goods and Services in a §66(a) Application

1402.01(d) Location of “Identification of Goods and Services”

1402.01(e) Responsibilities of Examining Attorney as to Identification

1402.02 Entitlement to Filing Date With Respect to Identification of Goods and Services

1402.03 Specificity of Terms Used in Identifying Goods and Services

1402.03(a) Inclusive Terminology

1402.03(b) House Marks

1402.03(c) Marks for a “Full Line of …”

1402.03(d) Identifying Computer Programs with Specificity

1402.03(e) Identifying Publications with Specificity

1402.04 Acceptable Identification of Goods and Services Manual

1402.05 Accuracy of Identification

1402.05(a) Goods That Are Components or Ingredients

1402.05(b) Material Composition

1402.06 Amendments Permitted to Clarify or Limit Identification

1402.06(a) Limiting the Identification of Goods and Services

1402.06(b) Clarifying the Identification of Goods and Services

1402.07 Scope of Identification of Goods and Services for Purposes of Amendment

1402.07(a) The “Ordinary-Meaning” Test

1402.07(b) Ambiguous Identifications

1402.07(c) Unambiguous Identifications

1402.07(d) Permissible Scope of Identification Not Affected by Proposed Amendment That Is Unacceptable

1402.07(e) Permissible Scope of Identification Affected by Proposed Amendment That Is Accepted

1402.08 Moving Goods and Services Between Companion Applications

1402.09 Use of Registered Marks Inappropriate in Identifications

1402.10 Identification of Goods and Services in Documents Filed in Connection with §1(b) Applications

1402.11 Identification of Services

1402.11(a) Computer Services

1402.11(b) Information Services

1402.11(c) Association Services and “Promoting the Interest of” Services

1402.11(d) Charitable Services, Other than Monetary

1402.11(e) Consulting Services

1402.11(f) Distribution of Videotapes, Audiotapes, Videodiscs, and Similar Items

1402.11(g) Recorded Entertainment Services

1402.11(h) Identification of “Bonus Programs”

1402.11(i) Recognition of Industry Terms

1402.11(j) Issuing Awards

1402.12 Parentheses and Brackets Should Not be Used in Identifications of Goods and Services

1402.13 Requirement For Amendment of Portion of Identification of Goods/Services

1402.14 Identification of Goods/Services Must Conform to Rules and Policies in Effect at the Time Registration is Sought

1402.15 Procedures for Processing Unacceptable Amendments to Identifications

1403 Combined or Multiple-Class Application

1403.01 Requirements for Combined or Multiple-Class Application

1403.02 Amendment of Combined or Multiple-Class Application

1403.02(a) Deletion of Classes

1403.02(b) Correction of Classification

1403.02(c) Addition of Classes

1403.03 Dividing of Combined or Multiple-Class Application

1403.04 Combined or Multiple-Class Marks in Official Gazette

1403.05 Refusals and Oppositions as to Less Than All the Classes in a Multiple Class Application

1403.06 Fees for Action After Filing, Multiple Classes

1403.07 Surrender or Amendment in Multiple-Class Registrations