INTERNATIONAL CLASS 17

Indefinite and unacceptable wording includes the following:

· Hose (unless the applicant specifies the material, type, or use/industry/field of use)

· Insulation (unless the applicant specifies the type, or use/industry/field of use)

· Rubber (unless the applicant specifies the form or use/industry/field of use)

· Tape (unless the applicant specifies the type, or use/industry/field of use)

· Pipes (unless the applicant specifies the material, type, or use/industry/field of use)

· Tubing (unless the applicant specifies the material, type, or use/industry/field of use)

· Plastic sheeting (unless the applicant specifies the use/industry/field of use)

More on Terminology in ID’s:

· The goods should be identified by their common names (or by concise descriptive wording) and when necessary for clarity or completeness, by a concise description of use and/or the industry or field of use. The use or field of use will be required in most cases because most of the goods in Class 17 are not consumer goods, but are industrial goods where the precise nature and use of the goods will not be self-evident from merely the common name of the product.

· Many items of goods in Class 17 are semi-manufactured industrial products made of plastics. In order to indicate that these goods are semi-manufactured, as opposed to raw materials in Class 1, the identification must indicate the form of the goods. For example, “plastic in the form of blocks, bars, sheets and pellets for use in the further manufacture of . . .” would be an acceptable identification in Class 17. Plastic in the form of resins, compounds, or powders which would be used to make bars, blocks, sheets and pellets, are considered raw materials and will be classified in Class 1. Note that the use or field of use should be indicated in order to facilitate a likelihood of confusion analysis, as well as a general understanding of just what these industrial goods are. Wording such as “. . .for general manufacturing use” is acceptable assuming it is actually correct.

· Goods that perform an insulatory function, either as a thermal insulator, acoustic insulator, electrical insulator, or shock or vibration insulator, will be classified in Class 17.

· Adhesive sealants (caulks) which are not used for stationery and general household use are classified in Class 17. Non-sealing, non-stationery adhesives are classified in Class 1, so it’s the sealing (insulating) function which puts these products in Class 17. Adhesive tape which is not used for household, medical or stationery use (i.e. tape which is used for commercial or industrial purposes) is classified in 17 – no one knows why.

· Non-metal pipe, tubes, and hose are in Class 17. Metal pipe is in Class 6.

· Plastic sheet material for use as a drop cloth will be classified in Class 17. Plastic sheet material for use in preventing weed growth, is in Class 17, while plastic sheet material to prevent erosion is in Class 19. Plastic or vinyl sheet material which performs a tarp-like function, e.g. unfitted swimming pool or hot tub covers, unfitted vehicle covers, unfitted liners for the cargo areas of vehicles are in Class 22. Plastic wrap, e.g. HANDI-WRAPÒ, and plastic film for industrial or commercial wrapping will be classified in Class 16.

· Plastic (not paper) packing and padding material used in shipping containers (e.g. crumpled plastic sheet material, “peanuts,” plastic foam bits, etc.) are classified in Class 17 because of the shock or vibration insulating function of the goods. However, plastic film for packaging (meaning wrapping) will be classified in Class 16.

3. REGISTERED TRADEMARKS;

· STYROFOAM – U.S. Registration Nos. 0531823; 1179147 and 1048783 (Suggest “plastic foam building insulation in sheets, panels, boards, and blocks,” for Class 17; plastic foam building materials will be in Class 19.)

· FIBERGLAS – U.S. Registration Nos. 0417252 and 0418586

· VELCRO – U.S. Registration Nos. 0661700; 1027417; 1091889 and others

· MYLAR - U.S. Registration No. 0559948

4. SUBSTANTIVE REFUSALS:

MODEL NUMBERS:

· Many Class 17 trademarks appear with a model number on the specimens. Be on the watch for situations where the drawing and the specimens show use of different trademarks. [See form paragraphs J3, J3-1, J4, J4-1, J5, and J5-1]

· Refusal should be made under Sections 1, 2, and 45. See form paragraph Q15-1

CONFIGURATIONS/FUNCTIONALITY:

If the applicant is seeking to register a configuration of the goods, then refusal should be made under Sections 1, 2 and 45 of the Trademark Act. See form paragraphs Q19-6; Q19-7; Q19-8; Q19-20 and TMEP Section 1202.03.

If the applicant is seeking to register an element which is functional [e.g. a design feature which serves a utilitarian purpose], then the appropriate refusal should be made under Sections 1, 2 and 45 of the Trademark Act. See form paragraphs Q 19-1; Q19-1-1; Q19-2; Q19-3; Q19-4; Q19-4-1; Q19-5 and TMEP Section 1202.03.

FOR APPLICATIONS FILED ON OR AFTER OCTOBER 30, 1998:

When refusing registration on the ground that the proposed mark is de jure functional, Section 2(e)(5) of the Trademark Act should be cited as the basis for refusal on the Principal Register; and Section 23(c) for refusal of registration on the Supplemental Register.

New form paragraphs and which to use when:

USE, GOODS

Q19-1A

Q19-2A

ITU, GOODS

Q19-1-2

USE, PACKAGING

Q19-4A

Q19-591

ITU, PACKAGING

Q19-4-2

USE, GOODS, INCAPABLE

Q19-5-2