Identification and Classification of Certain Computer Related Goods and Service

Class 9:

Pre-recorded software on CD-ROMs, diskettes, magnetic tapes, etc. is in Class 9. The description must provide an indication of the subject matter or function of the software and the subject matter or function indication must be detailed and specific. Very broad statements of function such as "computer programs for business use" are not acceptable.

Class 9:

Computer software [specify the function of the programs, e.g., for use in data base management, for use as a spreadsheet, for word processing, etc.] that is downloaded from a remote computer site" is classified in Class 9.

NOTE:

This is a change in classification policy. Previously, "downloadable computer software" was being classified in International Class 42. After a review of this policy, the PTO has decided to classify downloadable software in Class 9 with other software. The placement of downloadable software in International Class 9 is consistent with the practice in a number of other countries. Class 16: Only hard copy publications, e.g., printed magazines and books, are considered to be Class 16 goods.NoteMagazines or books that are downloadable from a computer network are not considered to be "hard goods" and they are classified in International Class 42, rather than Class 16. The service is defined as providing the publications on a global computer network and the subject matter of the publications must be specified. If an entire magazine or other publication is presented at the web site, the computer service of providing that publication electronically is considered to be the primary service involved in this activity. The service being provided is that of making available magazines, books and/or other publications via a computer. Appropriate language for these services would be: "Computerservices, namely, providing on-line [indicate specific nature of the publication] in the field of [indicate subject matter of the publication]" in Class 42. As with Class 16 publications, the subject matter of the publication does not affect the classification of this service.
Classes 35, 36, 37, 39, 40 & 41:

Any activity consisting of a service that ordinarily falls in these classes (e.g. computer games, various financial transactions, etc.) that also happens to be provided by means of a global computer network, is classified in the class where the underlying service is classified. For example, banking services are in Class 36 whether provided in a bank or on-line by means of global computer network. Similarly, the service of providing information by means of a global computer network is classified in the class of the information subject. Entities who offer these services by computer are considered "content providers," that is, they provide the information or substantive content for a web site and/or home page. A recitation of services for these specific content providers should read "providing information in the field of…by means of a global computer network." The service would be classified by the class of the subject matter of the information. If an entity provides information in a wide variety of fields, this must be reflected in the identification and the service may be classified in Class 42 (e.g., providing information in a wide variety of fields by means of a global computer information network.) Please note that the term "access" should be reserved for use in recitations for network service providers, such as, America OnLine®, Prodigy® and CompuServe®. The PTO considers the use of the term "access" by a content provider to be inaccurate because it causes confusion with the service provider activities.These guidelines also apply to activities in Classes 38 and 42, however, the comments below also apply to Classes 38 and 42.
Class 38:

The service of providing telecommunications connections to a global computer network is classified in Class 38. These services are purelytelecommunications "connections" such as those provided by AT&T®, MCI® or other telecommunications providers. It is ONLY the technical means by which one computer can communicate with another. The telecommunications provider does NOT provide the computer hardware that stores and processes the date: it provides the means by which data is transferred. This service connects the user to the "link provider" (see Class 42 discussion below) or the web site itself.
Class 42:

The service of providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information is classified in International Class 42. This language covers those services provided by entities such as America OnLine®, Prodigy® and CompuServe®. They provide the computer service (often using the telecommunications services of other entities as described above in Class 38) that enable computer users to access data bases and home pages of others. These entities are considered "link providers" in that they provide the computer/server connection required for computer users to access a content provider. The word "access" should be limited to these services and should not be used in describing the service of a content provider.
Note:-

A single entity may provide one or more of the services described above. However, each service must be properly identified and classified.
General Comment:

The term "Internet" is still the subject of a proceeding at the Trademark Trial and Appeal Board. Therefore, this term should not be used in identifying any goods or services connected with a global computer information network. Language such as "global computer information network" or a substantive equivalent should be used instead of the term "Internet."