The Board affirmed a requirement that Applicant Northeastern University amend its identification of goods for the mark NORTHEASTERN by specifying the material composition of its “clips for electric charging cables” to allow proper classification. The Examining Attorney maintained that the clips fall in Class 6 if they are metal, and International Class 20 if they are non-metal. Northeastern insisted that they fall in Class 9 with the rest of the goods in its application (“Cases for mobile phones; refrigerator magnets; battery packs; mouse pads’ computer mouse’ blank USB flash drives; sleeves for laptops). In re Northeastern University, Serial No. 87487674 (March 2, 2018) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Northeastern argued that the purpose of the clips controls their classification, and material composition s a secondary consideration to be used if the goods cannot be classified by function or purpose. It further contended that the singular purpose of its clips constitutes a special use or attribute justifying classification. The Board was unmoved.

[U]nlike “toilets adapted for medical patients or for use by disabled persons,” which are classified as medical apparatus in Class 10 based on the particular use of the goods, rather than in Class 11 with general “toilets,” Applicant’s “clips for electrical charging cables” do not have a special use or attribute that would justify classification in International Class 9 rather than by material composition in International Classes 6 or 20. See TMEP § 1402.03(5).

The Board agreed with Examining Attorney Steven M. Perez that “[n]othing in the identification of goods indicates that Applicant’s cable clips function differently than other cable clips, or that they are specially adapted for ‘for electric charging cables.'”

The Board affirmed the refusal to register solely as to the “clips for electric charging cables.”