Before considering what trademark classes you should choose or filing a trademark application, it is important to first understand what a trademark is and what it protects. A trademark can be any word, phrase, logo, symbol, design, or expression used to identify the source and origin of goods and services. Take for instance the internationally recognized apparel brand Nike. You can identify that a clothing article, say a t-shirt, is a Nike product by looking at the tag.
The Nike wording or swoosh logo, both registered trademarks, may not be shown anywhere on the shirt but clearly visible on the tag to let consumers know that Nike is the source of goods. Trademarks help distinguish your brand from competitors and ultimately help protect your brand’s recognition and customer good will that you will continue to build over time.
Every applied for trademark with the US Patent and Trademark Office (USPTO) must catalog their claimed goods or services in at least 1 out of 45 classes (001-045). Out of the 45, there are 34 classes for goods and 11 for services. For instance, class 025 protects all clothing goods offered by an apparel brand such as Nike, while class 039 is claimed for shipping and delivery services like that of the major courier company FedEx, formerly Federal Express.
How do I Find Out What Class My Trademark Is?
Before determining the classes that are right for you, it is important to determine which goods and/or services you plan on offering under the proposed mark as the USPTO does not permit the addition or alteration of goods or services to a registered trademark or pending trademark application. You may file multiple applications for the same mark, but that will be more costly and time consuming than claiming all goods or services on your initial application.
§ 1 (15 U.S.C. § 1051) of the Federal Statutes of U.S. Trademark Law require that the applied for trademark be used “in commerce” to qualify for registration. While actual sales are not a requirement, the rule does mean, however, that the goods or services claimed on your application are being offered for sale. With that in mind, the USPTO does allow for trademark application filings on an “intent to use” basis for those with “a bona fide intention” of offering the claimed goods or services. Thus, it is possible to claim goods or services that are not yet being offered by your business, so consider all future offerings before searching for the right class or trademark classes.
How To Search for a Trademark Class
The USPTO offers a public “ID Master List” database to help discover the trademark classes in which your company’s goods or services will fit best. Search “clothing,” for example, and the search engine will yield 767 results including typical articles of clothing, clothing for pets, and clothing laundry services, all falling under different trademark classes of goods or services. As such, detail is important! Filing your application under the wrong class could have serious consequences for your business that, at best, will cost you the fees necessary to file a new application.
See the USPTO’s updated description for each class here. Consult with an experienced trademark attorney for further assistance in narrowing down the trademark classes that best encompass the goods or services offered by your brand.
Can You Claim Multiple Classes on a Single Application?
Yes, absolutely. Take Dunkin’ Donuts, for example. Doughnuts and other bakery products they produce are all claimed under class 030 for staple food products, which further includes coffee. Restaurant services, however, fall under a different class, 043. Overall, Dunkin’ Donuts has a variety of federally registered trademarks in several trademark classes each to protect their food, food related services, merchandise, and mobile app and online customer services, all for their name, logos, and widely recognized slogan, “American runs on Dunkin’.”
As mentioned, trademark applications may be filed on an “intent to use” basis. In the case of multiple trademark classes, each class claimed on a single application requires its own filing basis. Thus, it is possible to file an application under a mix of trademark classes that are already “in use” in commerce and with the “intent to use” in commerce.
Another consideration is the filing fee for your trademark application. The filing fee for a trademark application is $250 for each class of goods or services. Contact an experienced trademark attorney to establish a filing strategy as it may be possible to fit goods or services in seemingly different trademark classes into a single class.
How to Search for Potential Conflicting Trademarks
Per§ 2 (15 U.S.C. § 1052), “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” In summary, no trademark will be awarded to applications that are likely to cause confusion in the mind of the consumer.
This means many things. First, that applied for marks can be withheld from registration on the basis of “likelihood of confusion” even if there is no identical previously applied for or registered trademark. All it takes is a likelihood to confuse the two brands and identities of goods or services. An applied for name, for example, may be refused for “likelihood of confusion” for maintaining a similar pronunciation and sound, appearance in spelling, or even in its translation if in a different language.
Other considerations for likelihood of confusion rejections are the degree of care employed by the consumer, proximity of the goods or services being sold or offered, and possibly of most importance, the similarity of the goods or services being claimed.
The second thing that this rule means is that identical marks CAN exist if they are unlikely to cause confusion. An example of two identical marks that coexist are the two prominent brands named Dove. One is for chocolate/food products while the other is for bath care products, each in entirely different trademark classes of goods. With the consumer in mind, it was deemed that one who is shopping for chocolate is not also shopping for bath products and is therefore unlikely to confuse the source of goods for each.
Accordingly, it is imperative that you consider the trademark classes of goods or services to be claimed in your application against those of a potentially conflicting trademark. To search for pending trademark applications and registered trademarks in the U.S., the USPTO provides another free search engine, the Trademark Electronic Search System (TESS), for their database of said trademarks. Basic instructions for searching the database based on trademark name and trademark classes:
- First, determine in what class(es) your goods or services will fall.
- Second, follow the link above to TESS and select a search option. The easiest to maneuver may be the second option labeled “Word and/or Design Mark Search (Structured).”
- Use the first “Field” selector on the right and select “International Class” and input the class in which you wish to search into the search term box to the left. If multiple trademark classes, separate each by a comma (e.g., 009, 035, 042).
- Next, use the second “Field” to select “Basic Index.” This is the appropriate field to search by brand name. Then input the name in the search term box to the left (e.g., Nike)
- Change the operator on the far right to “AND”
- Search away and remember that more than just identical matches may be cause for concern
See the USPTO’s comprehensive guide for further instructions to search TESS free-form for names, slogans, and even logos based on design descriptions. This guide provides countless tips and strategies to help narrow a search to save you time digging through hundreds and possibly thousands of results.
International Trademark Classes
A trademark registered through the USPTO only provides protection nation-wide. If you are thinking about offering your goods or services abroad and wish to have international trademark protection, you will have to file trademark applications in each country in which you would like to receive protection or utilize a multinational filing system such as the Madrid Protocol or European Union Trademark System.
Fortunately for international trademark applicants, the same 45 class system is subscribed to by most every nation’s trademark office worldwide.
The Nice Agreement and Its Role in Trademark Classes
The Nice Agreement, named after the city in France in which the formation of the Agreement was concluded, established the classification of goods and services for the purposes of trademark registration that the USPTO uses today. Almost every trademark office around the world is a party to the agreement and thus share the same good and service classifications, including the International Bureau of the World Intellectual Property Organization (WIPO). See our firm’s article for more considerations and information regarding protecting your brand internationally.
State Trademarks vs Federal Trademarks
If you are looking to register a trademark, you may be wondering if you should register it at the state or federal level. The answer to this question depends on several factors, including the type of business you have and the geographic area you want to cover. A state trademark is registered to a state’s trademark office and only affords the owner exclusive trademark rights to use the mark within the state’s borders, unlike the nationwide protection afforded by a federally registered trademark. State trademark offices share the same classifications as the USPTO.
It is most important to note that a trademark’s availability through a state’s office does not equate to the availability for a federal trademark through the USPTO. See our firm’s article on the differences between state and federal trademarks and the advantages of each.
Contact an Experienced Trademark Attorney to Determine the Right Trademark Class for You
Contact us today for more help with protecting your brand and intellectual property with a trademark. Our attorneys have limitless experience in not only filing and defending trademark applications, but in performing precursory conflict searches to help build the most effective strategy before filing your trademark application.
Our team will leave no stone unturned when performing a conflict search for your proposed mark, and, to provide even more assurance, we offer a money-back RLG Guarantee on all trademark applications. What this means for you is that should your application not receive a Notice of Allowance for any reason, a full refund will be issued. Reach out anytime to learn more about our trademark services and fixed-fee pricing on all IP matters.
