(Scientific,
Electrical, Nautical, Photographic)
GENERAL SCOPE OF
CLASS 9: electrical,
scientific, nautical, photographic, optical, recording, measuring, surveying,
computer, and life saving apparatus
1. SEARCHING
a.
RELATED INTERNATIONAL CLASSES |
|
|
3 |
Lens cleaning solution |
|
7 |
Machinery |
|
12 |
Automotive |
|
10 |
Medical |
|
11 |
Heating and air conditioning |
|
16 |
Computer program manuals |
|
28 |
Stand-alone computer and video game machines, and formerly,
sports helmets and video and computer game software |
|
35;37;38;41;42 |
Retail; repair; telecommunications, computer network access and
linkage; educational; and computer services |
b.
USING COORDINATED CLASSES
009[CC]: 007,011,016, A, B, 200 (Note: no services are included.)
016[CC]: 009 AND SERVICES, A, B, 200 (Usually, most
useful to search)
028[CC]: 009 AND SERVICES, A, B, 200
c.
LIMITING BY GOODS/SERVICES
If it is necessary to limit a
search by goods/services, make sure you truncate the singular term using the $
truncation symbol or utilize the plurals function, again, in singular form.
Computer$[gs] or
computer[gs] (with plural function)
Software$[gs] or
software[gs] (with plural function)
Program$[gs] or
program[gs](with plural function)
2. IDENTIFICATION ISSUES
·
portable breathing apparatus and oxygen, including respirators not
for artificial respiration
·
robots for laboratory use or for personal use
b.
CERTAIN GOODS ARE EXCLUDED FROM CLASS 9
·
alarms for motor vehicles - 12
·
all hair dryers
·
battery operated and electric hand held dryers - 11
·
computer game machines which stand alone -28
·
electronic music synthesizers - 15
·
electric razors - 8
·
flash lights - 11
·
instruction manuals for computers - 16 (unless sold together as a unit with the software, then all in 9)
·
photographic film, undeveloped - 1
·
robots for industrial use - 7
·
spark plugs for motor vehicles - 7
·
vacuum cleaners, floor polishing machines: (as of 1/3/97) in class
7
c.
CONSTRUCTING IDENTIFICATIONS
COMPUTER
SOFTWARE MUST INDICATE FUNCTION OR
PURPOSE AND FIELD OF USE. Avoid language such as “software in the field of...” or “software for use by...” Unless the field or user is extremely
specific, these ID’s will not be sufficiently definite. For example, “software in the field of finance” or “software for use by financial institutions” are both indefinite
because we don’t know what function the software performs. Is it accounting software, E-mail software,
employee payroll software, electronic funds transfer software, etc.? For more on this, see Exam Note 94/1.
Some general wording is allowed.
The following wording is acceptable:
Computers
Computer
hardware
Computer
peripherals
Computer
game software
Computer
operating programs or computer operating systems
Indefinite and unacceptable wording includes the following:
Computer
programs featuring multimedia (unless the applicant specifies the
content)
Computer
firmware (unless the applicant specifies the function/purpose of the
program)
More on Terminology in ID’s
Internet, Intranet and Extranet are
acceptable.
The wording “computer programs” and
“computer software” is interchangeable.
“User manuals” and/or “Instructional
Manuals” are OK in class 9 IF the ID includes language indicating the manuals
are “sold as a unit” or “distributed therewith.”
Downloadable software is now classified
in Cl. 9. An acceptable id is: computer software for use in .... (specify
purpose, i.e., database management, etc.) that may be downloaded from a remote
computer site.
More indefinite
terminology:
Components (to correct add namely or
replace with and parts therefor)
Id’s such as “camera parts,” or “components of televisions” are
not acceptable because the parts could be in a variety of
classes. the parts must be named, i.e.,
camera parts, namely ......
However, it is
acceptable to list goods, followed by “and parts therefore” , i.e., cellular telephones and parts
therefor.
Computer games is
indefinite; use “computer game
software.”
Computer games is
indefinite; use “computer game
software.”
Videotapes,
audiotapes, (cassettes, etc.), CD’s, must all list the subject matter recorded
thereon, i.e., featuring music, featuring children’s stories, etc. “for educational purposes” is indefinite,
but “for use in teaching Spanish, for use in teaching home repairs,” etc., is
acceptable.
Devices (namely
or add intended use) - this is acceptable if the use is clearly stated, i.e.,
measuring device is indefinite.
The applicant should name the item by the common commercial name, i.e.,
graduated rulers, microscopes, etc. if
there is no common commercial name, then the applicant may state: measuring devices for ......(i.e., measuring
atomic weight, determining fluid depth, etc.)
Systems
(comprising) (list the components of the systems, except: computer operating systems, and burglar
alarm systems.)
Computer
workstations is indefinite. Use
“computer workstations comprising..... (must list components).” If comprised of specific hardware
components, classify in Class 9; if comprised of specific furniture components,
classify in Class 20.
Don’t use
registered marks in id’s: MINOTYPE, LINOTYPE, TELETYPE, TELEX,
WINDOWS. Use “graphical user
interface” instead of “WINDOWS.” “Voice mail” is now acceptable in
id’s.
3. DESCRIPTIVE
REFUSALS
Evidence - Finding evidence for refusals (primarily for 2(e)(1)
refusals) often requires a higher level of effort than other classes. Since computer goods evolve rapidly,
applicants often use new and highly descriptive terminology in their
trademarks. While this practice may
help the customers understand the function of the new product, it presents
problems for trademark purposes.
Unfortunately, even the most recent computer dictionaries may not have
your term listed. Lexis/Nexis and the
INTERNET also should be consulted. The
librarian can help with INTERNET searches.
The two most useful dictionaries for class 9 examination are:
Newton’s
Telecom Dictionary, and
Freedman’s
Computer Dictionary (the best of the bunch).
Useful websites:
www.onelook.com www.google.com
Acronyms - Always check several computer dictionaries as well as
the standard acronym dictionaries.
Prior Registrations - Due to the rapid pace of development
in this field, the treatment of potentially descriptive terms in prior
registrations is hugely inconsistent. A
term that may be highly descriptive now, (i.e., INTERNET) nevertheless may be
registered. Much of this might have
been due to a paucity of evidence during earlier examinations. Therefore, in deciding issues of
descriptiveness, rely more on current evidence than on prior
registrations. The same goes for ID’s,
just because the Office may have accepted something in the past doesn’t mean we
should keep accepting it if its wrong.
SOME DESCRIPTIVE
TERMS
wizard (for computer software)
certain acronyms: PC
(PERSONAL COMPUTER); CAD (COMPUTER AIDED
DESIGN: ISDN; LAN; WAN
enterprise (a type of computer network, connecting dissimilar
types of computers)
firmware
interactive (user can interact with material on screen)
manager (for software)
multimedia (features sound, data, text)
micro (microcomputer or
small)
smart (something having built in computing capability, sometimes
called
intelligent, see In re Smart Probe,
32 USPQ2d 1377)
technology, technologies (technical, scientific)
user friendly (easily
understood computers)
virtual (sometimes)
Personification
marks” for computer software should be refused as merely descriptive if
the mark names the intended user or are used in the trade to describe a
particular type of computer program.
Examples of personification marks are DENTAL OFFICE MANAGER, ACCOUNTANT,
LANDSCAPE ARCHITECT. See In re Intelligent Instrumentation, Inc.,
40 USPQ2d 1792 (TTAB 1996) (VISUAL DESIGNER found merely descriptive for a
type of software).
4. SPECIMEN
ISSUES
Specimens - Screen printouts from the actual program and showing the
mark in the title bar are OK as specimens.
“Launch” screens also are OK. (A
launch screen is the little introductory message box a user gets after opening
a program.) As with other goods,
brochures are not acceptable specimens, no matter what the applicant says. The only exception would be under the Lands End catalog exception. Instruction manuals showing the mark are
OK. If the applicant submits manuals as
specimens for class 9, the identification does not necessarily have to include
the manuals.
Downloadable Software - Acceptable specimens for these goods
may show use of the mark on an INTERNET web page, but in order to be
acceptable, the user must be able to download the software from the page. If the Web page simply advertises the
software without providing a way to download it, the specimens are not good.
5. OTHER REFUSALS
A. PROGRAMMING LANGUAGES
Programming
languages and communication protocols are not considered to be goods in trade,
but rather a set of words and rules for constructing a program. If the term sought to be registered
identifies only a language it does not function as a trademark. Use form paragraphs Q37 and Q37-1.
B.
SINGLE WORK REFUSALS
B.
SINGLE WORK REFUSALS
Phonograph
records, audio or video tapes, CD’s--the title of a single record does not
function as a trademark; the title of a record series may. See In
re Appleby, 159 USPQ 126 (TTAB 1968) and In re National City Bank 168 USPQ 180 (TTAB 1970). To overcome a single work refusal, the
applicant may submit evidence that the mark is used in a series (two or more) of recordings. It is not necessary to send three specimens of the second
recording or to submit a declaration verifying that the mark was used on the
second recording at least as early as the filing date.
However, a mark
which identifies a single computer
program, or a CD-ROM containing a particular program, such as a computer
game, are NOT refused as single
works.
Musical
performer/group names should be treated in accordance with In re Polar Music International AB, 714
USPQ 1567, 221 USPQ 315 (Fed. Cir. 1983) and
In re Spirer, 225 USPQ 693 (TTAB 1985). See TMEP 1202.09(a).
First, the names of musical performers may only be registered if the mark is used on a series of musical sound recordings. The identification of goods must specifically indicate that there is a series. If the application does not identify the goods in this fashion, the examining attorney must require an appropriate amendment before publication.
Secondly,
the applicant must provide evidence
that the mark has been applied to at least two different recordings in the
series. In an intent-to-use
application, the applicant must provide evidence of use on at least two
recordings at the time the applicant files either the amendment to allege use
or the statement of use. It is also
advisable to provide advance notice of this requirement during initial
examination. If the applicant is unable
to demonstrate use on a series, the mark may
be registered on the supplemental register, provided it is otherwise
proper. These procedures apply
specifically to performers' names used on recordings and not to other types of
marks used on other types of artistic material.
Finally, under Spirer, it is only necessary to inquire about the applicant's
control over the nature and quality of the goods if the application record
indicates the name of a party other than the applicant and office policy
otherwise would require such an inquiry.
C.
MODEL NUMBERS
Model numbers
that serve only to distinguish between different models of a product line do
not function as trademarks. But see In re Clairol, Inc., 173 USPQ
355 (CCPA 1972) and In re Peterson
Manufacturing, 229 USPQ 466 (TTAB 1986) .
D.
LIKELIHOOD OF CONFUSION INVOLVING OLD SOFTWARE ID’S
Use Form Paragraph Q29-22-4, which
reads: “The Trademark Trial and Appeal Board has held that where a registrant's
goods are broadly identified as “computer programs recorded on magnetic disks,”
without any limitation as to the kind of programs or the field of use, it is
necessary to assume that the registrant's goods encompass all such computer
programs, and that they would travel in the same channels of trade normal for
those goods and to all classes of prospective purchasers for those goods. In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).”