(154) Title 37-Patents, Trademarks,
and Copyrights
Chapter I-Patent Office, Department of Commerce
Parts 2 and 6-Rules of Practice in Trademark Cases
International Trademark Classification
A proposal was published at 37 F.R. 6404 to revise 6.1 of the
Rules of Practice in Trademark Cases. The Patent Office proposed to
establish the "International Classification of Goods and Services to
Which Trademarks Are Applied" (the subject of the "Nice Agreement
Concerning the International Classification of Goods and Services for
the Purposes of the Registration of Marks" of 1957, as revised at
Stockholm on July 14, 1967) as the primary classification of goods and
services for registration of trademarks and service marks. Pursuant to
the Notice, written comments have been received, and a public hearing
was held on June 14, 1972. Full consideration has been given to all
matter presented, and changes in the text of the original proposal have
been made in view thereof. It has been determined that adoption of the
international classification system is desirable.
The Patent Office has studied the international classification and,
since Mar. 5, 1968, has indicated the appropriate international class in
all publications and on all issued registrations and renewals as a
subsidiary classification. Based on this experience and the comments
received, it is now believed that adoption of the international schedule
as the primary classification system is desirable. The international
system is easier to administer because of fewer classes of goods and the
availability of an alphabetical listing of goods and services.
The Nice Agreement provides for an International Committee of Experts
whose objective is to keep the classification current. The
classification of specific goods and services is set forth in the
Alphabetical List entitled "International Classification of Goods and
Services to Which Trademarks Are Applied" (published by the World
Intellectual Property Organization). In addition, the International
Trademark Classification List contains the names of the classes setting
forth the basic contents of each class. The Alphabetical List also
comprises explanatory notes which serve as guidelines for determining
the appropriate international class for a specific product or service.
The alphabetical listing within the International Trademark
Classification Manual is currently used by the Office as a guideline for
determining the degree of particularity of identification of goods. See
"Identification of Goods and Services in Trademark Applications," 36
F.R. 13232; July 16, 1971.
Applications for registrations filed on or after Sept. 1, 1973, and
registrations issuing thereon, will be classified according to the
international classification set forth in the new 6.1. Accordingly,
the international classification is adopted under Section 30 of the
Trademark Act of all purposes under the statute and rules; and,
therefore, will be the criterion for determining, inter alia, fees.
Applications for the registration of marks filed on or before Aug.
31, 1973, appeals or petitions to revive or oppositions filed in
connection with said applications, and affidavits, renewals and
petitions for cancellation filed in connection with registrations
issuing thereon, will continue to be processed under the classification
system existing at the time the mark was registered.
All applications which are published and registrations which are
issued will carry both the appropriate international classification and
existing U.S. classification number.
An insufficient fee, in connection with an appeal or opposition on
any application or in connection with an affidavit or renewal filed in
connection with any registration, will not render the same unacceptable,
if the proper fee is submitted within a time limit set forth in a
notification of the defect, providing the proper fee for at least one
class has been originally submitted within the applicable time limit.
This will be the case even if the full fee is not received within the
sixth year in the case of an affidavit filed under Section 8 or before
the end of the twentieth year, including the grace period, in the case
of renewal applications, or within the six-month statutory response
period in the case of an appeal, or within the thirty-day opposition
period, or any extension thereof in the case of the filing of an
opposition.
The existing classification system will continue to be used for
searching registered and pending marks until all documents in the search
file are organized on the basis of the international system of
classification. Until this changeover is effected, the U.S. class
designation will continue to be printed on all published applications
and registrations issued under the existing or the international
classification system to facilitate searching on the basis of the
existing U.S. system of classification.
Until all applications filed on or before Aug. 31, 1973, have been
disposed of, the trademark sections of the Official Gazette, which are
organized by class, will include two sections: one for applications
published or registrations issued on the basis of applications filed on
or before Aug. 31, 1973, organized by class according to the U.S.
schedule of classes; the other section for applications published or
registrations issued on the basis of applications filed on or after
Sept. 1, 1973, organized by class according to the new international
schedule.
Certification marks and collective membership marks will continue to
be classified as set forth in redesignated 6.3 and 6.4.
Efforts will be made to have the International Trademark
Classification List printed by the Government Printing Office or
otherwise assure the availability of the List from local sources.
Notification will appear in the Official Gazette when the List is
available from local sources of the Government Printing Office.
The English edition of the "International Classification of Goods and
Services to Which Trademarks Are Applied" can presently be ordered from:
Sales Branch, The Patent Office, Block C
Station Square House, St. Mary Cray
Orpington, Kent, England
Certain modifications and additions to the international trademark
classification have been published as supplements and are also available
from the British Office. In addition, and inasmuch as the World
Intellectual Property Organization (WIPO) has issued the List in several
languages, it is anticipated that an English version will be published
by that organization.
We have been advised by the Patent Office of the United Kingdom that
the only acceptable methods of payment for the International Trademark
Classification List are by International Postal Money Order or by
banker's draft payable in sterling and drawn on a bank in the United
Kingdom.
* * * * *
May 14, 1973 ROBERT GOTTSCHALK
Commissioner of Patents
BETSY ANCKER-JOHNSON
Assistant Secretary for
Science and Technology
Published in 38 F.R. 41681, June 4, 1973
[911 O.G. TM 210]
(Note: Rule 2.85 (Classification schedules) was revised and Rule 6.1
(International schedule of classes of goods and services) was
established as of September 1, 1973 by this notice: prior U.S. schedule
of classes was redesignated as Rule 6.2.)