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[LBCIPlawyer]

Colleagues,

Recently I received an office action alleging that I choose the incorrect IC05 for “hygienic pad, namely, pads applied to the underarms of shirts, blouses and sweaters”. The product is a thin pad adhered to the underarm of clothing to absorb sweat. The Examiner, going by the manual, indicated that the class needed to be in IC025 for "clothing." I disagreed and set for the following:

Thank you for returning my call today. Regarding the suggestion to reclassify the goods defined as “hygienic pad, namely, pads applied to the underarms of shirts, blouses and sweaters” and currently filed in IC005 to IC025, I do not agree.

According to the Manual, feminine hygiene pads, breast pads and sanitary pads are classified in IC005. Just because they are adhered to an article of clothing, i.e., underwear/undergarments and/or a bra, does not mean that they are an article of clothing. Similarly, just because the hygienic pads identified in the application are adhered to an article of clothing, i.e., a blouse or sweater, does not mean that the hygienic pads are articles of clothing. In all of these products, the function of the “pad” is the same – to protect under or outer garments. They all have a hygienic/sanitary use.

The goods identified are not articles of clothing and should remain in IC005.

The response was:

Per your request, I forwarded your e-mail to my manager, who in turn researched the issue with our inhouse ID/Class department.
 
Here is the response from ID/Class explaining why dress shields are classified in International Class 25.  As ID/Class has the final say, I am afraid that the goods must remain in International Class 25.
 
A pad that absorbs involuntary expression of breast milk is something that is appropriate in 5 as are the menstrual goods. These are conditions that do not commonly occur everyday and are caused by an atypical body function. But it's not the common expression of sweat that everyone experiences all the time. Dress shields are used to protect clothing as much or more than it's used just for absorbing sweat. The others are used to protect clothing to a degree but also to relieve discomfort and avoid embarrassment due to an occasionally occurring physical condition. The dress shields are in 25.
 
Feel free to contact me if you have any further questions.

Does anyone agree that this is just blatently wrong? Since when does a description of goods have anything to do with the goods' function?? And since when is the Trademark Office trained as a physician - A pad that absorbs involuntary expression of breast milk is something that is appropriate in 5 as are the menstrual goods. These are conditions that do not commonly occur everyday and are caused by an atypical body function. I was under the impression that these are "typical" body functions as to women in those circumstances, as is sweating in other circumstances.

[Marke]

I don't know, I can see both sides.  It's a tough one.

However, as a practical matter, since ID/Class has spoken, this examining attorney is not going to back down.  You would have to petition the Director to get the goods classified in Class 5 (see TMEP Section 1704).

[JSonnabend]

A more important question: why does the class matter to you?

- Jeff

[DogDayPM 9er9er9er]

A more important question: why does the class matter to you?

I had the same question, but probably not from the same angle.  I'm relatively ignorant of the intersection between the class into which a widgit is wedged and the level of protection available.  Also, throughout the below please forgive loose language usage, despite which I hope that my intent is clear enough to understand.

In the U.S., is the ability to prosecute an alleged mark infringer always linked to likelihood of confusion despite classification of the articles?  That is, if the OP ends up in the IC s/he does not want, and there are similar articles all classed in the IC s/he does want, does that have any impact on the ability to prosecute alleged infringers?  Contrariwise, if the protected and "infringing" articles are in the same class, does that make it easier to make out proofs of LC?  Or does this really just not matter?

What about outside the US?  Does having a US reg slotting into the "wrong" IC affect either registration or attempts at prosecuting an infringer in, e.g., the EU?

Many thanks in advance.

[JSonnabend]

In the U.S., it's likelihood of confusion, period.  The DuPont factors (Polaroid, Sleekcraft, whatever) don't include "international classification".  The test is by and large the same in the EU, but I haven't done any detailed analysis over there.

If the OP was very concerned with IC for some reason, he could try to amend his ID rather than the IC of the current ID.  Rather than try to fit a square peg in a round hole, he could try to change the peg.

- Jeff

[Kaitlin]

Re the OP's original query, note also that despite our modern attempts to keep things gender neutral, historically the sorts of "hygenic pads" within the class ran in different channels of trade from things that did not form a part of "women's unmentionables".   And that historic use may be continuing to influence consumer expectations. 

(Still, I agree that the rationale given by the examiner's manager for keeping your product from the class seems strained, even if perhaps the outcome may be correct.  Menstrual cycles are hardly a-typical, if you're female.  I suspect that the true, if unrecognized, rationale was that the use you describe doesn't have to do with the female reproductive cycle or birth.  I'd bet that if you had a pad meant to only absorb sweat from hot-flashes after cesareans, it would have been allowed in the class.)

[LBCIPlawyer]

Re A more important question: why does the class matter to you?, the tone of which I think is uncalled for, the reason it matters is because counsel for another company is threatening to oppose the mark once it publishes in OG. The other company has a slew of marks in IC005, so of course, not being in the same class as any of the other company's mark could only bolster our fight against the opposition to come.

[JSonnabend]

Re A more important question: why does the class matter to you?, the tone of which I think is uncalled for, the reason it matters is because counsel for another company is threatening to oppose the mark once it publishes in OG. The other company has a slew of marks in IC005, so of course, not being in the same class as any of the other company's mark could only bolster our fight against the opposition to come.

Sorry you inferred any "tone" to my answer, and further sorry you found it offensive.

Your reasoning has very little, if any, legal basis, as I explained above.  Since you are apparently a lawyer, you might want to take some time and read DuPont and the myriad of TTAB and Federal Circuit cases (which are most relevant to oppositions) which apply it.

- Jeff