INTERNATIONAL CLASS 5
(Pharmaceuticals and Pesticides)

 

GENERAL SCOPE OF CLASS 5:            Pharmaceutical, veterinary, and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

 

 

RELATED INTERNATIONAL CLASSES

1

agricultural chemicals, fertilizer

3

toiletries, cosmetics, cleaning preparations

10

Medical devices

44

(form-er 42)

Hospital services

 

IDENTIFICATION/CLASSIFICATION OF GOODS GUIDELINES

 

IN GENERAL:


Pharmaceuticals and medicines should be identified by their common names and in many cases by a description of the use or therapeutic claim/condition to be treated.  Pesticides should be identified by the specific type of pesticide and by the field of use (e.g., domestic, agricultural).  Class 5 medical preparations include not only pharmaceuticals for use in or on the body (human and animal) but also in vitro diagnostic chemicals for clinical diagnostic purposes.  If a pharmaceutical is for veterinary use, this must be indicated, e.g., “for veterinary use,” “for domestic pets,” “for livestock,” “for dogs” or other clarifying wording.

 

INDEFINITE TERMINOLOGY:


Bandages (specify type:  wound bandages are in IC 5, support bandages are in IC 10)

Drugs (specify particular product name and/or condition to be treated/therapeutic claim)

Medicines (specify particular products and condition to be treated/therapeutic claim)

Pharmaceuticals (specify particular product name and/or condition to be treated/therapeutic claim)

Sanitary preparations (specify particular products)

Veterinary preparations [specify particular products and condition to be treated and animal (e.g., pets, livestock) or field]


COMPLIANCE WITH OTHER LAWS


In an application for goods that fall within the scope of “pharmaceuticals,” a claim by applicant that it is in compliance with the Federal Food, Drug and Cosmetic Act is not required nor are any specimens submitted required to show any such compliance.

 

In an application for goods that fall within the scope of “pesticides,” a claim by applicant that it is in compliance with the Federal Insecticide, Fungicide and Rodenticide Act is not required nor are any specimens submitted required to show any such compliance.


SPECIAL ISSUES:


LIKELIHOOD OF CONFUSION: SPECIAL ASPECTS/SIGNIFICANT CASES


The “doctrine of greater care” may apply in a case involving pharmaceuticals vs. pharmaceuticals: i.e., a more conservative approach in determining a likelihood of confusion because of the harmful consequences of taking the wrong medicine.  A greater disparity between the marks and/or the goods than would normally be expected may be required to avoid a Section 2(d) refusal.  A lesser probability of confusion than would normally be appropriate may be sufficient to support a Section 2(d) refusal.  See Glenwood Laboratories, Inc. v. American Home Products Corp., 173 USPQ 19 (CCPA 1972) ; American Home Products Corp. v. USV Pharmaceutical Corp., 190 USPQ 357 (TTAB 1976); Schering Corp. v. Alza Corp., 207 USPQ 504 (TTAB 1980) ; In re Star Pharmaceuticals, Inc., 221 USPQ 85 (TTAB 1984) ; TRADEMARKS AND UNFAIR COMPETITION (McCarthy), Sec. 23:12; 64 TRADEMARK REPORTER 26.  (NOTE:  This is not a “per se rule”.  In many cases, a difference in the type of pharmaceutical or the medical field of use will be sufficient to avoid a Section 2(d) refusal.)

 

ORNAMENTATION OF PHARMACEUTICAL TABLETS/CAPSULES


Examples:  speckled pills, multi‑colored capsules, etc.


Not de jure functional, but requires evidence of acquired distinctiveness.  See In re Star Pharmaceuticals, Inc., 225 USPQ 209 (TTAB 1985).

 

INTERNATIONAL CLASS 5

(Pharmaceuticals and Pesticides)

 

Pharmaceutical, veterinary and sanitary preparations;

Dietetic substances adapted for medical use, food for babies;

Plasters, materials for dressings;

Materials for stopping teeth, dental wax;

Disinfectants;

Preparations for destroying vermin;

Pesticides, fungicides, herbicides.

 

Explanatory Note

 

This class includes mainly pharmaceuticals and other preparations for medical purposes.  Pharmaceuticals for either human or animal use go in Class 5.  The use is presumed to be for humans unless otherwise stated in the identification of goods.  Class 5 also includes sanitary preparations for medical purposes and for personal hygiene; pesticides (insecticides, fungicides, etc.); air fresheners.

 

This class does not include, in particular:

 

            -            Cleaning preparations (Cl. 3).

            -            sanitary preparations being toiletries (Cl. 3).

            -            deodorants for personal use  (Cl. 3).

            -            supportive elastic bandages (Cl. 10).

            -            diagnostic preparations not for medical use (Cl. 1).

 

* * * * * * * * *

 

General Rules for the Identification of Goods:

 

Pharmaceutical preparations for use in the treatment of [specify condition or disease treated].

Veterinary pharmaceutical preparations for use in the treatment of [specify condition or disease treated] in [specify class of animal, e.g., domestic pets, livestock]. YOU NEED BOTH DISEASE AND ANIMAL LISTED!

Pesticides for [specify field, e.g., domestic, agricultural, commercial] use.

 

Bandages:

            Class 5: Surgical and adhesive bandages.

           

            Related Goods:

            Class 10: Compression, elastic, and orthopedic support bandages.

           

 

Diagnostic Preparations:

Class 5: Diagnostic preparations [or reagents] for clinical or medical laboratory use; medical diagnostic reagents; clinical reagents.

 

Related Goods:

            Class 1: Reagents for scientific or medical research use; diagnostic preparations [or reagents] for scientific or research use.

 

Adhesives:

Class 5: Adhesives for medical or dental use, such as “dental adhesives,” “adhesives for bandages” or “medical adhesives for (indicate medical use)”

 

Related Goods:

            Class 1: General use adhesives

            Class 3: Cosmetic adhesives

            Class 16: Adhesives for household or stationery use

 

Pesticides

            Class 5: Pesticides (including insecticides, fungicides, etc.)

 

            Related Goods:

                        Class 1: fertilizers

 

Foods:

Class 5: Baby food, food for babies, food for infants, food for diabetics, food for enteral feeding, food for medically restricted diets, are acceptable IDs in Class 5 but “food for invalids” is indefinite without indicating the common commercial name of the food.;

herbal tea for medicinal purposes.

 

            Related Goods:

                        Class 30: Tea and herbal tea.

 

Incontinence products:

Class 5: Incontinence products that are worn on the body such as “incontinence pads,” “incontinence garments,”

 

Related Goods:

Class 10: Incontinence products that are not worn on the body, such as “incontinence sheets.”

 

Personal Care Products:

            Shampoos and Lotions:

Class 5: Medicated shampoos, dandruff shampoo, medicated lotions.

Related Goods:

Class 3: non-medicated lotions and shampoos. 

 

Class 3: Cosmetics are presumed to be non-medicated unless the ID states otherwise.

 

Class 5: Sanitary pads, sanitary napkins and tampons.

 

Sun Care:

Class 5: medicated sunburn lotions.

Related Goods:

Class 3: Sun tan oils and lotions; sun block and sunscreen.

 

Soaps:

Class 5: can include medicated or disinfectant “washes”:

Antibacterial [or “antibiotic,” “antimicrobial” or “disinfectant”] handwash.

 

Related Goods:

Class 3: includes all soaps, even if they are medicated or disinfectant:

Disinfectant soap.

Medicated soap.

 

Deodorizers:

            Class 5: Room deodorants and air fresheners.

           

Related Goods:

Class 3: Personal deodorant;

                          Potpourri, perfumes.

 

Contraceptive devices:

            Class 5: Contraceptive foams, sponges; oral contraceptives.

 

Related Goods:

Class 10:  Condoms and diaphragms for contraception.