Trademark Classification Changes Coming to the USPTO
Effective January 1, 2018, the United States Patent and Trademark Office will adopt the classification changes listed in the most recent version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement).
That’s a mouthful. So, let’s break that down a little. The Nice Agreement is a multilateral treaty administered by the World Intellectual Property Organization (WIPO) that establishes how every good and service offered should be grouped and classified for the purposes of registering trademarks. When an applicant files a trademark application, it must list the goods and services that will be sold or rendered in connection with that mark. Currently, the Nice Agreement divides all goods and services into 45 separate classes. Goods are divided into Classes 1 through 34 and services are divided into Classes 35 through 45. For example: pharmaceutical products are classified in International Class 5, clothing is classified in International Class 25, ice cream is classified in International Class 30, financial services are classified in International Class 36, and educational services are classified in International Class 41.
Since 2013, there have been annual revisions to the Nice Classification system. Sometimes, the revisions include minor changes such as punctuation changes: parentheses are removed, commas are added, and formerly capitalized words are revised to the lower case. Other times, the changes are very significant. Revisions include the addition of new goods and services, the deletion of goods and services, and modifications to the wording of existing goods and services. Occasionally, goods and services are moved from one class to another. And rarely, additional classes are added to the Nice Agreement. These revisions help the Nice Agreement keep up with emerging technologies and services.
For example, up until 2001 there were only 42 Classes. International Class 42 was used as the “catch-all” class to include all new or emerging services or, in the terms of the Nice Agreement, “services that cannot be classified in other classes”. But when that became unwieldy, the Nice Agreement was amended (effective January 1, 2002) to add International Classes 43 through 45. And services that originally fell into the Class 42 “catch-all” were re-classified. When this change happened, restaurant and bar services were moved to International Class 43. Interestingly, legal services were kept in International Class 42 and remained there for 5 years. But this did not seem to be a good fit, as Class 42 covers scientific and technological services, research and design, and the design and development of computer hardware and software. Therefore, effective January 1, 2007, legal services were re-classified from Class 42 to Class 45, where they are currently listed.
In the most recent revision that will be effective January 1, 2018, the modifications appear to be mostly minor. If you are preparing to file a trademark application in the new year, however, please keep in mind that changes have been made. Your trademark attorney should consult the revised edition when drafting the identification of goods and services for your application.