The United States Patent and Trademark Office (USPTO) recently issued a final rule incorporating the classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for Purposes of the Registration of Marks. The changes focus on restructuring International Class 42 into International Classes 42 - 45 and became effective January 1, 2002.

What is the purpose of classification?
The purpose of trademark classification is to group, to the fullest extent possible, like goods and services into a single class. According to the Trademark Act, classification is for the convenience of the USPTO administration and is not intended to limit or extend the applicant’s or registrant’s rights. The USPTO requires a filing fee (currently $325) be submitted for each separate class of goods and/or services in an application.

Prior to the change there were 42 International Classes. The first 34 classes are directed to classification of goods (e.g., Class 8 - hand tools, Class 14 - jewelry, Class 25 - clothing, and Class 33 - wine). Generally, when applying for a trademark for goods, determining classification is relatively easy. Applications for service marks previously fell under Classes 35 - 42 as follows:

Class 35 — Advertising and Business
Class 36 — Insurance and Financial
Class 37 — Building Construction and Repair
Class 38 — Telecommunications
Class 39 — Transportation and Storage
Class 40 — Treatment of Materials
Class 41 — Education and Entertainment
Class 42 — Miscellaneous

Over the years, it became evident that Class 42 included many disparate services (i.e., from lodging to beauty care to computer programming services) due to the inclusion of the language "services that cannot be classified in other classes."

What changes were made to classification?
The Committee of Experts for the Nice Agreement approved the restructuring of Class 42, creating three additional classes. The new classes are as follows:

Class 42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.

Class 43 Services for providing food and drink; temporary accommodations.

Class 44 Medical services; veterinary services; hygenic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

Class 45 Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.

How will the change be implemented?
All applications filed on or after January 1, 2002, must comply with the new classification schedule. For applications filed before January 1, 2002, the new classification schedule is optional. Furthermore, the USPTO will not reclassify existing registrations upon renewal.