Choosing the correct trademark service class is one of the most critical decisions in your trademark application, and one of the most commonly mishandled. At Rapacke Law Group, we’ve guided hundreds of tech startups and businesses through this classification maze, preventing costly errors that could delay protection by 6-12 months or leave your brand vulnerable to competitors.
Most businesses filing their first trademark application make the same costly mistake: they either guess the correct service class or try to save money by cramming everything into a single category, such as Class 35. The result? A significant share of trademark applications receive an Office Action, an official USPTO communication requiring clarification or correction, before they can proceed toward registration.
Here’s what that mistake costs: 6-12 months of additional processing time, $250-$350 in extra filing fees per class you missed, and potentially losing your brand name entirely if a competitor files correctly while you’re stuck fixing errors. In the first-to-file system, being second means negotiating coexistence agreements or watching your brand get squeezed out of crucial service categories.
The stakes are higher than ever. In fiscal year 2023, the USPTO received approximately 738,000 new trademark applications, according to the USPTO’s official performance data. Clarivate’s 2024 State of Innovation report notes that ‘just over 500,000 new applications’ were filed during calendar year 2023, demonstrating the consistently high volume of trademark activity.
What Are Trademark Service Classes?
Service classes are the 11 “services only” categories (Classes 35–45) in the international Nice Classification system that the USPTO adopted in the 1970s. These categories were established through the Nice Agreement of 1957 and are now used by trademark authorities in over 80 countries worldwide, creating a harmonized system that simplifies global brand protection.
The Nice Agreement, named after the committee of experts that met in Nice, France, sets out the classifications for international trademarks. When the United States joined the Nice Agreement in 1973, it standardized categories across member countries.
A service mark identifies the source of services: consulting, transportation, software platforms, rather than physical goods. The distinction matters because it determines which class you file under and what kind of evidence you’ll need to prove use in commerce.
The Nice Classification system is overseen by the World Intellectual Property Organization (WIPO), which also administers international agreements such as the Madrid Protocol to facilitate global IP protection.
Consider FedEx: it files under Class 39 for transportation and storage services because its customers pay it to move packages. Nike is classified under Class 25 because it manufactures and sells tangible products: shoes and apparel that you can hold in your hands. Same trademark system, completely different classes based on what customers actually purchase and the trademark protections they require.
The USPTO requires every federal trademark application to list at least one specific class with a detailed description of your services, not just the class number. The entry “Class 35” is rejected. You need a description such as “online retail store services featuring consumer electronics” that clearly states your business.
Selecting the right trademark class is crucial. If you choose the wrong class, your application may be rejected, or you may need to refile, resulting in delays and additional costs. Accurate class identification ensures you receive the legal protection you need and helps avoid legal and financial complications.
Here’s where service classes get interesting: multiple identical names can coexist as registered trademarks if they operate in different, unrelated classes. DOVE soap (Class 3, owned by Unilever) and DOVE chocolate (Class 30, owned by Mars) can coexist because consumers are unlikely to confuse soap with candy. But try to launch DOVE financial services when DOVE insurance already exists in Class 36? That’s when the USPTO’s likelihood-of-confusion analysis becomes a problem.
Real-world service class examples:
- UPS: Class 39 (transportation and storage services for package delivery)
- Airbnb: Class 43 (temporary accommodation booking services)
- LinkedIn: Class 35 (business networking and employment-related advertising services)
- Peloton: Class 41 (fitness instruction and entertainment services)
Each company identified its core revenue-generating activity and matched it to the appropriate service class. That’s the fundamental skill you need to master before filing.
Overview of Goods vs. Service Classes
The Nice Classification divides all commercial activity into 45 international classes: Classes 1-34 cover goods (tangible products) and Classes 35-45 cover services (activities performed for others). Goods and services are never placed in the same class; goods are in classes 1-34 and services in classes 35-45.
Service classes (Classes 35-45) represent a substantial portion of trademark filings in the United States. According to WIPO’s 2024 World Intellectual Property Indicators, Classes 35, 41, and 42 (all service classes) consistently rank among the top five most-filed trademark classes globally, demonstrating that protecting service marks is nearly as common as protecting product brands.
Goods classes (1-34) cover physical products you can touch, hold, or download. Class 9 includes electrical and scientific apparatus, like smartphones and downloadable software. Class 25 covers clothing and footwear. Class 5 covers pharmaceuticals. Class 16 includes paper goods and printed materials. Class 29 covers meats and processed foods. Class 30 includes staple foods like cereals and pastries. Class 31 covers natural agricultural products and fresh fruits. Other examples include industrial oils (Class 4), cosmetics and cleaning preparations (Class 3), leather goods (Class 18), precious metals (Class 14), building materials (Class 6 and 19), musical instruments (Class 15), sports equipment (Class 28), and land vehicles (Class 12). If customers walk away with a product they own, you’re looking at a goods class.
Service classes (35-45) cover activities, expertise, and access. Advertising agencies, financial advisors, construction contractors, telecommunications providers, educators, software-as-a-service platforms, restaurants, healthcare providers, and law firms all operate in service classes. If customers pay you to perform a service or access a resource, you need a service class.
Many businesses need both. A fitness brand selling branded apparel (Class 25 goods) and streaming workout classes (Class 41 services) requires protection in both classes. A software company offering downloadable applications (Class 9 goods) and cloud hosting (Class 42 services) faces the same reality; this is especially common for SaaS businesses that need comprehensive brand protection across their entire tech stack. Most brands typically fall under multiple trademark classes if they offer more than one product or service.
Each class you add incurs $250- $350 in USPTO filing fees, depending on whether you use TEAS Plus or TEAS Standard forms. Understanding exactly which classes your business needs directly impacts your budget and your brand protection strategy.
Quick reference showing goods vs. service class pairs:
- Class 9 (downloadable mobile apps) vs. Class 42 (software-as-a-service platforms)
- Class 25 (athletic clothing and footwear) vs. Class 41 (fitness training services)
- Class 5 (pharmaceutical products) vs. Class 44 (medical treatment services)
- Class 16 (printed books) vs. Class 41 (publishing and educational services)
- Class 11 (HVAC equipment) vs. Class 37 (installation and repair services)
The pattern becomes clear: if you sell a product, look at goods classes 1-34. If you provide ongoing access, expertise, or activities, you fall into service classes 35-45. And if your business model includes both, which is increasingly common, you need multiple classes from the start. The classification system helps differentiate between various types of goods and services, making it easier to identify potential conflicts and determine the scope of protection for each trademark.
According to trademark industry data summarizing common filing patterns under the Nice Classification (used by the USPTO), Classes 9, 25, 35, and 41 consistently rank among the most frequently registered classes globally. Class 9 covers technology products, Class 35 covers business services, Class 25 covers clothing/apparel, and Class 41 covers educational and entertainment services, illustrating the dominance of tech and service-based businesses in trademark activity.
List of Trademark Service Classes (Classes 35-45)
Class 35: Advertising and Business Services
Class 35 covers advertising, marketing, business management, business administration, and office functions. According to WIPO’s global trademark data, this class accounted for approximately 7.7% of all international trademark filings in 2023, making it the most filed-for service class worldwide.
Core services include:
Online retail and e-commerce operations. If you run a marketplace selling third-party products, you’re offering “online retail store services featuring [specific product categories]” under Class 35. Amazon’s retail marketplace, Shopify storefronts, and Etsy all fall under this category. The key distinction: you’re facilitating sales of others’ goods, not manufacturing your own products.
Marketing and advertising agencies. Digital marketing firms, SEO consultancies, social media management companies, and traditional advertising agencies all operate in Class 35. If clients pay you to promote their businesses, you’re providing Class 35 services.
Business consulting and management. Strategy consultants, HR recruitment agencies, business process optimization firms, and franchise consulting services belong here. The common thread: you’re helping other businesses run more effectively.
If your company helps other businesses operate, promote themselves, or sell products, Class 35 is your primary classification. The breadth of this class means careful, specific wording in your application is critical to avoid Office Actions.
Class 36: Insurance and Financial Services
Class 36 encompasses insurance, financial affairs, monetary affairs, and real estate transactions; essentially any service involving money management or financial risk.
Banking and payment processing. Online banking platforms, payment processors such as Stripe and PayPal, cryptocurrency exchanges, and mobile payment apps all fall under Class 36. The defining characteristic: you handle, transmit, or manage monetary transactions for customers.
Insurance services. Auto insurance providers, health insurance companies, life insurance brokers, and specialized insurance offerings (such as cyber and professional liability) all operate here. Both underwriting risk and brokering policies fall under Class 36.
Investment and wealth management. Stock brokerages, robo-advisors, wealth management firms, venture capital fund administration services, and crowdfunding platforms like Kickstarter belong in Class 36 because they facilitate financial transactions or investment opportunities.
Real estate affairs. Real estate agencies, property management companies, mortgage brokerage services, and real estate investment platforms use Class 36 to facilitate transactions and provide property-related financial services.
A fintech startup offering peer-to-peer payments would file in Class 36 for the monetary transaction services. An NFT marketplace that handles financial transactions for digital assets would also be classified as Class 36. If your business involves managing money, investments, insurance, or property transactions for others, this is your class.
Class 37: Construction and Repair Services
Class 37 covers building construction, installation services, and repair services for structures, equipment, and machinery.
Construction and building services. General contractors, specialized builders (roofing companies, foundation specialists), road construction firms, and commercial builders all use Class 37. If you physically construct or renovate structures, you’re here.
Installation services. HVAC installation companies, EV charging station installers, solar panel installation services, and telecommunications equipment installers all fall under Class 37. According to USPTO examination notes, installation of equipment is classified in Class 37, even when the equipment itself may be classified as goods in another class.
Repair and maintenance services. Automotive repair shops, smartphone repair services like uBreakiFix, appliance repair technicians, computer hardware repair, and machinery maintenance services belong in Class 37. The common element: hands-on work restoring or maintaining physical objects.
One critical distinction from the USPTO’s classification guidance: installing software is actually Class 42 (technological services), not Class 37. Class 37 covers only physical installation and repair work.
Class 38: Telecommunications
Class 38 covers services that enable communication or data transmission between people, devices, or networks.
Telecommunications carriers and ISPs. Mobile network operators like Verizon and AT&T, internet service providers, and satellite communication companies all provide Class 38 services. They transmit data and enable connectivity: the communication infrastructure.
Communication platforms and VoIP. Voice-over-IP services, such as Vonage, messaging applications, and video conferencing platforms, including Zoom (for transmission), fall under Class 38. The USPTO distinguishes between transmitting content (Class 38) and creating content (Class 41).
Broadcasting and streaming transmission. Radio and television broadcasting, podcast hosting platforms, and the technical infrastructure that enables video streaming all fall under Class 38. According to USPTO classification notes, means of communication belong in Class 38, and transmitted content in Class 41.
Online forums and network access. Providing online forums for community discussions, chatroom services, and network access platforms is classified under Class 38 because it facilitates communication between users.
The key distinction: if your business primarily connects users or transmits data, rather than creating the content of what’s communicated, you’re in Class 38. A video streaming platform might need both Class 38 (for transmission infrastructure) and Class 41 (for entertainment content).
Class 39: Transportation and Storage Services
Class 39 covers the transport of people or goods and the storage of goods for others.
Freight and package delivery. FedEx, UPS, DHL, freight trucking companies, ocean cargo shipping firms, and supply chain logistics providers all operate in Class 39. Transporting goods from point A to point B is the core definition of this class.
Passenger transportation. Airlines, railway services, bus companies, taxi services, and ride-sharing platforms like Uber and Lyft file in Class 39 for moving people. Whether it’s across town or across continents, if you transport passengers, you’re here. Class 39 covers transportation services, but land vehicles themselves, such as cars, trucks, and buses, are classified as goods in Class 12.
Delivery and courier services. Food delivery platforms like DoorDash and Uber Eats (which arrange the transport of meals), bicycle courier services, and postal services all use Class 39. The common element: coordinating or executing the movement of items to customers.
Warehousing and storage. Operating storage facilities, cold storage for perishable goods, fulfillment centers for e-commerce sellers, and self-storage rental companies all fall under Class 39. Amazon’s fulfillment services for third-party sellers would be Class 39.
Travel arrangement. Travel agencies and tour operators that arrange transport and travel logistics for customers often file in Class 39, alongside Class 43 (temporary accommodation).
If your company’s value proposition centers on getting something or someone from one location to another, or safely storing items until needed, Class 39 is your classification.
Class 40: Treatment of Materials
Class 40 covers material treatment services and custom manufacturing, transforming materials or producing goods in accordance with others’ specifications.
Custom manufacturing and fabrication. Contract manufacturers producing goods to client specifications, 3D printing services creating custom parts, and private-label food manufacturers all operate in Class 40. The distinguishing factor: you’re not selling your own finished products; you’re processing materials for others.
Material processing services. Textile dyeing facilities (fabric processing for clothing manufacturers), metal fabrication shops that cut or treat metal parts, and custom carpentry services all fall under this category. Even printing services (custom t-shirt printing, sign printing, promotional item production) belong in Class 40 because they apply processes to materials to create final products for customers.
Recycling and waste treatment. Electronics recycling centers, waste processing facilities, and water purification services use Class 40 because they transform waste materials into reusable forms or safely process them.
Food and beverage processing for others. Commercial kitchens that process and package food for food brands, wineries that crush grapes for independent vineyards, and contract breweries that produce beer for other brands all fall under Class 40.
The critical distinction: if you bake and sell your own cookies, those cookies are goods in Class 30. But if you offer a service, baking custom cookies for clients using their recipes or specifications, that production service is Class 40.
Class 41: Education and Entertainment Services
Class 41 (education and entertainment services) ranks among the most frequently filed trademark classes in the U.S., reflecting the explosive growth of online learning and digital entertainment platforms. WIPO’s 2024 indicators similarly show Class 41 among the top-filed service classes globally.
Educational services and training. Online course platforms such as Coursera and Duolingo, corporate training programs, tutoring services, and workshop providers all fall under Class 41. Schools, universities, and professional certification programs also operate here.
Entertainment content and streaming. Netflix’s streaming service (providing non-downloadable entertainment), movie theaters, live performance production, concert venues, and theater companies all use Class 41. The key distinction from USPTO guidance: downloadable content is classified in Class 9 (goods), while streaming non-downloadable content is classified in Class 41 (services).
Sports and fitness instruction. Peloton’s live and recorded fitness classes, personal training services, sports coaching, yoga studios, and organized sports leagues all fall in Class 41. If you’re instructing or organizing physical activities, you’re in the right place. However, it’s important to note that sports equipment, gymnastics and sports articles, such as basketballs, fishing poles, and other sporting goods, are classified as goods in Class 28, not as services in Class 41.
Publishing and media production. Online magazines and blogs (non-downloadable publications), book publishing services for authors, news reporting services, and podcast production companies fall in Class 41 for the creation and delivery of educational or entertainment content.
If your business informs, educates, or entertains through organized activities or content delivery, Class 41 is your primary classification. The growth of e-learning and streaming services has made this one of the most competitive classes in the trademark system.
Class 42: Scientific and Technological Services
Class 42 covers scientific and technological services, research and design, software services, and industrial analysis; essentially, the class for tech services and R&D. If you’re interested in how to protect these services, understanding the differences between state and federal trademarks is crucial.
Software as a Service (SaaS) and cloud platforms. This is where most tech startups land. Cloud storage services, web-based software platforms such as Salesforce, platform-as-a-service offerings, and Amazon Web Services (AWS) all fall under Class 42. Software accessed via a web browser falls under Class 42, while downloadable software falls under Class 9.
Research and development services. AI research firms, cybersecurity testing companies, biotech research services, and scientific laboratory analysis all operate in Class 42. Industrial design services and engineering consulting also fall under this category.
IT support and development services. Website development agencies, custom software programming services, tech support companies, and technology consulting firms all use Class 42. Even computer system analysis and technological project management belong here.
Other scientific and technical services. Environmental testing services, quality control analysis, architectural design, urban planning, and blockchain platform services all fall under Class 42’s broad umbrella of technological expertise.
Many companies file in both Class 9 (for downloadable apps) and Class 42 (for cloud services) to cover all aspects of their software offerings. The USPTO is strict about this distinction; misclassifying a SaaS platform as Class 9 will trigger an Office Action requiring correction.
Class 43: Hotels and Restaurants
Class 43 covers services providing food and drink, as well as temporary accommodation: the hospitality class.
Hotels and lodging. Hotels, motels, bed-and-breakfasts, and temporary accommodation booking platforms, such as Airbnb, fall under Class 43. Airbnb doesn’t own hotels, but its service of connecting people to short-term lodging falls squarely in this class.
Restaurants and food services. Fast-food restaurants, fine-dining establishments, coffee shops such as Starbucks (for café services), catering companies, and food-truck operations all use Class 43. Any establishment where customers can purchase prepared food or beverages for consumption belongs here.
Bars and beverage services. Bars, brewpubs, nightclubs, and wine bars file in Class 43 for their beverage service offerings.
Event spaces with hospitality. Conference room rentals, event halls with food and beverage services, and temporary meeting facilities fall under Class 43 of temporary accommodation and hospitality.
If customers eat, drink, or sleep at your establishment, or you arrange such services, Class 43 is your classification.
Class 44: Medical, Beauty, and Agricultural Services
Class 44 covers medical care, healthcare, veterinary services, hygiene, and beauty care for humans and animals, as well as agricultural and horticultural services.
Healthcare and medical treatment. Hospitals, clinics, telemedicine platforms such as Teladoc, dental practices, psychotherapy and counseling services, and chiropractic care all fall under Class 44. If practitioners or institutions provide treatment or diagnostic services to people, this is the class. While Class 44 covers medical and healthcare services, medical apparatus and devices, such as surgical, dental, and veterinary instruments, artificial limbs, and dental prosthetics, are classified as goods in the medical apparatus class (Class 10).
Pharmaceutical dispensing. Pharmacy services (dispensing medication and consultation) fall under Class 44, while the medications themselves are classified as goods in Class 5.
Beauty and wellness services. Hair salons, barbershops, spas offering massages or cosmetic treatments, nail salons, cosmetic laser treatment clinics, and tattoo studios all fall in Class 44. These services focus on personal appearance or well-being.
Veterinary and animal care. Veterinary clinics, pet grooming services, and animal breeding or healthcare services all belong in Class 44.
Agricultural and horticultural services. Gardening services, landscape design, farming services provided to others, pest control for agriculture, and agricultural consulting all use Class 44.
Class 44 is about caring for living things (humans, animals, or plants) or enhancing their health and appearance. Protecting a trademark for medical or wellness services in Class 44 doesn’t override professional licensing requirements, but it’s how you secure brand names in regulated health professions.
Class 45: Personal, Legal, and Security Services
Class 45 covers personal and social services for individual needs, security services for protecting property and people, and legal services.
Legal services. Law firms, legal advisory services, and notary public services all fall in Class 45. Every law firm with a registered trademark has protected it in Class 45 for legal services.
Security and protection. Private security companies, alarm monitoring services, cybersecurity services protecting personal or property safety, and security consulting firms all use Class 45. Identity verification and background-checking services also fall under this category because they relate to security and safety.
Personal and social services. Online dating platforms like Hinge (for “online social networking services” under USPTO classification), matchmaking services, funeral services, personal concierge services, adoption agencies, and even genealogy research fall under Class 45.
Administrative and intellectual property services. Domain name registration services are classified in Class 45 as personal/administrative services, though this is sometimes debated with Class 42 for technical aspects.
If your business provides advice, support, or assistance that’s personal or legal in nature, or protects people and property, Class 45 is your classification. This class captures everything from law offices to bodyguard services to wedding planning.
How to Choose the Right Service Class for Your Business
Getting your service class right starts with brutal honesty about what your customers actually pay you to do. You cannot add new classes after filing; any expansion requires a new application and additional fees. That makes upfront planning essential.
Step 1: Inventory your current services with surgical precision.
Don’t write “consulting.” Write “business strategy consulting for early-stage technology startups” or “human resources consulting in the field of healthcare staffing.” Don’t write “software.” Write “providing temporary use of online non-downloadable software for project management” (Class 42 SaaS) or “downloadable mobile application for fitness tracking” (Class 9 goods).
The more specific you are now, the less likely you’ll face an Office Action requiring clarification later. Remember, improper identification of goods and services ranks among the top reasons for refusals.
Step 2: Map near-term services (1-3 years out).
U.S. trademark applications allow filing on an “intent-to-use” basis for services you genuinely plan to offer. If you’re a consulting firm today but launching an online training program next year, include that future Class 41 service now. Filing multiple classes in one application is cheaper than filing separate applications later.
Be cautious: you must actually use the mark in commerce for all listed services within the allowed timeframe (typically 3 years from filing, with possible extensions). Claiming services you have no bona fide intent to offer can result in partial cancellation or challenges to your registration.
Step 3: Rigorously distinguish between goods and services.
This is where most first-time filers stumble. Software is the classic trap: downloadable apps are Class 9 goods, while cloud-based platforms are Class 42 services. Misclassifying these is difficult to fix after filing because the USPTO won’t let you simply reassign a service to a different class; you often have to delete the misclassified item and file a new application.
Other common goods/service splits:
- Fitness brand: Branded apparel = Class 25 goods, streaming workout classes = Class 41 services
- Publisher: Printed books = Class 16 goods, publishing services or non-downloadable e-publications = Class 41 services
- Restaurant: Packaged foods for retail = Class 29/30 goods, restaurant services = Class 43 services
Step 4: Use the USPTO Trademark ID Manual religiously.
The USPTO’s Acceptable Identification of Goods and Services Manual is your primary resource for getting class wording correct. Search by keywords related to your service (“coaching,” “cloud storage,” “ride sharing”) and use the pre-approved descriptions you find.
According to USPTO examination data, vague or overly broad descriptions trigger Office Actions requiring clarification. Filing with a pre-approved ID Manual language dramatically reduces this risk because, when attorneys review the filing, they immediately recognize the standardized descriptions and know which class it belongs to.
Example translations:
- Your description: “Monthly access to pre-recorded yoga videos.”
ID Manual language: “Providing online non-downloadable videos in the field of yoga instruction”: Class 41 - Your description: “Cloud-based accounting software subscription.”
ID Manual language: “Software as a service (SaaS) featuring software for accounting”: Class 42 - Your description: “Business coaching for entrepreneurs.”
ID Manual language: “Business management consulting services”: Class 35
Step 5: Identify primary versus ancillary services.
Focus your class selection on core, revenue-generating services. Incidental activities that generate minimal revenue may not need separate class coverage initially.
For example, a Class 35 marketing agency that occasionally hosts a networking event (potentially Class 41 entertainment/education) might skip Class 41 unless events become a significant branded offering. Similarly, branded promotional items you give away (such as pens or T-shirts) don’t necessarily require goods class coverage because you’re not actually selling those items under your trademark.
File where it matters commercially. You can continually expand protection later with a new application when new revenue streams become substantial.
Step 6: Check coordinated classes for conflict prevention.
Certain classes commonly appear together and may affect likelihood-of-confusion analysis during trademark examination:
- Class 35 + Class 41: Business consulting firms that also offer training programs
- Class 42 + Class 45: Technology platforms with legal compliance features
- Class 38 + Class 41: Streaming platforms (transmission infrastructure + entertainment content)
- Class 39 + Class 43: Travel companies (transportation + temporary accommodation)
When conducting your trademark clearance search, look beyond your exact target class. Similar marks in coordinated classes may still confuse if the services commonly originate from the same source. The USPTO considers whether goods or services are related when evaluating the likelihood of confusion, even if they’re technically in different classes.
Action checklist:
- ✓ List every service customers currently pay for with specific descriptions
- ✓ Identify realistic 1-3 year expansion services
- ✓ Match each service to an ID Manual entry and note the class number
- ✓ Verify you’re not confusing goods and services
- ✓ Prioritize core revenue-generating classes
- ✓ Search coordinated classes during trademark clearance
- ✓ Confirm you have bona fide intent for all intent-to-use classes
This homework prevents the costly mistake of filing in the wrong classes, discovering the error months later during examination, and having to abandon and refile with new fees plus 6-12 months of lost time.
Common Mistakes When Filing Under Service Classes
An estimated 25% of trademark applications received Office Actions in 2023, with identification and classification errors among the most common issues that could be corrected. Self-filers who guess at service classes instead of using official resources are especially vulnerable.
Using overly broad or vague descriptions
Filing with generic language like “business services” in Class 35 or “technology services” in Class 42 almost guarantees an Office Action. The USPTO examining attorney cannot assume what you do; you must spell it out.
Instead of “consulting,” specify “business management consulting in the field of healthcare” if that’s your niche. Instead of “technology services,” write “computer software design for others” or “software as a service (SaaS) featuring software for customer relationship management.”
Improper identification of goods and services led to refusals that could have been avoided with more specific language in the ID Manual.
Misclassifying services as goods (or vice versa)
This is the most expensive mistake. The classic error: filing a downloadable mobile app under Class 42 (because it’s tech-related) when it actually belongs in Class 9 as a good. Or listing a cloud software platform under Class 9 when it should be Class 42.
The USPTO strictly enforces this distinction: downloadable software is classified as Class 9 goods, and non-downloadable/web-based software is classified as Class 42 services. Misclassification triggers an Office Action, and the USPTO often won’t allow you to simply move the item to a new class if that would add a class to your application; you may have to delete the item entirely or file a new application.
Another common trap: streaming services. If you run a website that streams music or video without downloads, that’s a Class 41 service (entertainment delivery) or Class 38 service (transmission), not a Class 9 good.
Over-claiming services you don’t actually offer
Some applicants list services across multiple classes “just to cover all bases,” including activities they aren’t actually doing. This creates serious problems.
For any trademark class filed on a “use in commerce” basis, you’ll need to provide a specimen (proof of use) for each service. For intent-to-use filings, you’ll eventually need to demonstrate actual use before registration. Claiming services without bona fide intent to offer them can result in partial or complete cancellation of your registration.
It’s fine to file an intent-to-use for a service you have concrete plans to launch within 1-3 years. It’s not acceptable to list random services in hopes of blocking competitors without a real plan to offer them.
Trying to save money by cramming everything into one class
Trademark filing fees are per class (currently $250-$350 per class, depending on whether you use TEAS Plus or TEAS Standard forms. Small businesses sometimes try to force all their descriptions into a single class to save money.
But if those services don’t actually belong in that class, the examining attorney will require you to delete them (losing protection) or abandon and refile in the correct class, paying new fees anyway, plus losing 6-12 months.
For example: running a gym (Class 41 services) and selling nutritional supplements (Class 5 goods). If you try to list supplements under Class 41, it won’t work. You need two classes. Paying for both upfront is cheaper and faster than dealing with refusals and refills.
Copying competitor class selections without analysis
Researching competitor trademark registrations is smart, but don’t blindly copy their class selections. They may offer a different mix of goods and services, or they may have made mistakes themselves. Large companies often file defensively in many classes that a smaller business doesn’t need.
Always tailor your class selection to your actual business activities.
Ignoring coordinated classes during clearance searches
Failing to search for similar names in related classes can lead to unpleasant surprises. For example, searching only Class 45 (dating services) but not Class 42 could miss a similar brand offering social media software that might conflict due to their shared social networking functionality.
The USPTO’s likelihood-of-confusion analysis considers whether goods or services are related, even if they fall in different classes. Broaden your clearance search to include coordinated classes.
The bottom line: Classification errors cause months-long delays, hundreds of dollars in additional fees, and sometimes complete application failure. They’re also completely preventable with proper research using the USPTO ID Manual and, where budgets allow, consultation with a trademark attorney experienced in service class selection.
Can You File in Multiple Service Classes on One Application?
Yes, and this is often the most innovative approach for businesses operating across multiple service categories. Most brands fall under multiple trademark classes, especially when they offer a range of products or services. Filing in numerous trademark classes ensures comprehensive protection for your brand. The USPTO allows multi-class applications in which a single trademark covers multiple classes of goods and/or services.
How multi-class applications work:
You submit one application listing your trademark, then specify each class with its own detailed service description and filing basis (use in commerce or intent-to-use). Each class requires its own government filing fee, but you receive a single unified application number and generally a single examination process.
Example 1: Logistics and technology brand
A company offering package shipping services (Class 39), warehouse storage (also Class 39, under a different description), and a software platform for shipment tracking (Class 42, SaaS) would file a multi-class application covering Classes 39 and 42. They’d pay two class fees while maintaining a single application record.
Example 2: Consulting and education brand
A business providing one-on-one consulting (Class 35) and pre-recorded online training videos (Class 41) needs both classes to fully protect its brand across all service categories. They could file these together in one multi-class application.
Each class in your application must include a specimen demonstrating actual use in commerce. A screenshot of your website offering consulting services serves for Class 35, while a screenshot of your course platform could serve for Class 41.
Advantages of multi-class filing:
- Single docket number simplifies portfolio management and renewal tracking
- Unified priority date across all classes from your filing date
- Administrative efficiency with one examination process instead of multiple separate applications
- Lower total cost than filing multiple separate applications (though still multiple filing fees)
Drawbacks to consider:
- Higher upfront investment: Three classes means 3 × $250 = $750 in filing fees minimum
- Linked fates: If one class encounters problems (Office Action, likelihood of confusion), it can slow the entire application. All classes are tied to the same application record.
- Use requirements during maintenance: At 5-6-year and 10-year renewals, you must prove continued use in all classes. If you’ve stopped using the mark in one class, you should delete that class during renewal to avoid issues or potential cancellation.
The division option:
If one class is ready to register but another is delayed or has conflicts, you can request to split the application. This splits problematic classes into separate “child” applications, allowing clean classes to proceed to registration while troubled ones remain under examination.
Dividing applications requires an additional fee but prevents one troublesome class from completely stalling your other classes. This flexibility can be valuable for businesses with complex multi-class applications.
Strategic considerations:
Most small to medium businesses benefit from multi-class applications when they know from the start they need multiple classes. Filing Classes 35 and 41 together for a business consulting firm launching online courses makes sense.
However, if you’re uncertain about some services or the classes are entirely unrelated to different risk profiles, separate applications provide more flexibility. You can assign or license one class without affecting the other, and problems in one won’t impact the others.
You cannot add classes to an existing application after filing. If you realize six months later that you need Class 42 in addition to your Class 35 filing, you must file an entirely new application with new fees. This makes upfront planning essential.
The decision framework:
File multi-class if:
- ✓ You’re sure about needing multiple classes now or within 3 years
- ✓ The classes are related and likely to have similar examination outcomes
- ✓ You want simplified portfolio management under one registration
File separate applications if:
- ✓ You’re uncertain about some classes and want flexibility to abandon them
- ✓ The classes are entirely unrelated to different risk profiles
- ✓ You may want to license or assign classes separately in the future
- ✓ Different business units handle different service categories
For most businesses, multi-class filing offers efficiency and cost savings despite the higher upfront fees. Just ensure every class you include represents services you genuinely offer or have concrete plans to provide within the required timeframe.
International Perspective on Service Classes
One significant advantage of the Nice Classification is its role in international harmonization. International trademark registration, facilitated by the World Intellectual Property Organization (WIPO), simplifies the process of protecting trademarks across multiple countries through systems like the Madrid Protocol and the Nice Classification. According to WIPO’s 2024 trademark indicators, the system is used by trademark authorities in over 80 countries, meaning Classes 35-45 for services are recognized across the U.S., the European Union, the UK, Canada, Australia, Japan, and beyond.
If you register a mark in the U.S. under Class 42, extending that mark internationally under the Madrid Protocol to Europe or Asia means that the same Class 42 covers similar services in those jurisdictions. This harmonization greatly simplifies global branding strategies.
Critical nuances to understand: For additional insights, see the top 10 SaaS patents that have shaped software innovation.
Exact class numbers, different wording requirements
While class headings and general scope are aligned globally, each country’s trademark office retains discretion over acceptable phrasing for goods and services descriptions. A description that’s perfect for the USPTO might need adjustment for the EUIPO (European Union Intellectual Property Office) or other national offices.
For example, the USPTO might accept “software as a service (SaaS) featuring software for project management” in Class 42. The EUIPO also uses Class 42 for software services, but may prefer “providing temporary use of online non-downloadable software for project management.” The substance is identical; only the phrasing varies to match local preferences.
Timing of classification updates
All Nice Agreement member countries update their classification systems as WIPO releases new editions, but adoption timing varies. According to Federal Register notices on international trademark classification, the USPTO typically implements new Nice Classification versions effective January of each year. Smaller countries’ offices might lag in adopting best practices or retain legacy terminology longer.
Madrid Protocol limitations
If you use the Madrid System to file internationally based on your U.S. application or registration, you must have the classes established in your base application. According to WIPO’s trademark filing guidance, you cannot add new classes to your Madrid extensions later; expanding into new classes internationally requires filing separate national applications in those countries or filing a new base application.
Country-specific practices
Some jurisdictions impose additional requirements:
- China historically required separate single-class applications (though recent reforms allow multi-class for some international filings)
- Japan’s trademark office may require more detailed functional descriptions of software services than the USPTO
- EU examinations might demand standardized phrases from their specific acceptable terms database
These variations don’t undermine the system’s utility; they just mean “harmonized class numbers, local wording preferences.” When filing internationally, experienced trademark counsel or specialized filing services can adapt your USPTO descriptions to match each jurisdiction’s requirements while keeping the exact class numbers.
Practical example:
Your U.S. trademark for a Class 42 “AI-powered software-as-a-service platform for marketing automation” can be extended to Japan and the EU under the same Class 42. However:
- Japan’s office might require you to specify the AI functionality more precisely
- The EUIPO might want you to use their standardized terminology from the TMclass database
- Both jurisdictions will still classify it as Class 42 for technological services
These adjustments are usually straightforward when handled by professionals familiar with local examination practices.
Global classification updates
Friendly Agreement member countries meet regularly to update the classification system as new services and technologies emerge. According to WIPO’s 2024 indicators, the 13th edition for 2026 will introduce new terminology for emerging services, including cryptocurrency asset trading and AI-powered platforms.
Staying current with these updates matters if your industry evolves rapidly. A service that didn’t have standardized wording five years ago might now have an official ID Manual entry, making applications more straightforward and examinations smoother.
Bottom line for international expansion:
Classes 35-45 give you a common language for discussing service marks globally. Get your U.S. classification right, and it forms a strong foundation for international filings. Just remember: harmonized class numbers, but adapt your descriptions to local office preferences to minimize refusals and delays.
International trademark attorneys or services specializing in Madrid Protocol filings can “translate” your USPTO application into formats optimized for European, Asian, and other markets, ensuring consistent protection without unnecessary classification battles.
FAQ: Trademark Service Classes
Q: Do I need a separate service class for every different service I offer?
Not necessarily. Many related services fall under a single class if they share the same general category. For example, a marketing agency offering SEO services, social media management, content creation, and paid advertising could list all those activities under Class 35 as various forms of advertising and business services.
You only need multiple classes when your services fall into fundamentally different categories. A consulting firm (Class 35) that also develops an online training academy (Class 41) needs both classes because consulting and education are distinct service categories.
The decision should follow the USPTO Trademark ID Manual, not your internal organizational structure. Check where each service naturally falls within the official classification system, rather than how your company is currently organized.
Q: How specific should my service description be in a USPTO application?
Specific enough that an examining attorney immediately understands what you provide, but not so narrow that normal business evolution makes it inaccurate.
Using pre-approved descriptions from the USPTO Trademark ID Manual strikes the perfect balance. For example, “software as a service (SaaS) featuring software for project management” is specific (it’s cloud software for a particular function) but not overly restrictive (you can add features without changing the fundamental service).
Overly broad descriptions like just “business services” or “technology services” trigger Office Actions requiring clarification, adding months to your application timeline.
The sweet spot: use ID Manual language that clearly identifies your service’s nature and field while allowing reasonable evolution of your offerings within that category.
Q: Can I change my service class after my application is filed?
No, you cannot move a service from one class to another or add new classes to an existing application after filing. The USPTO treats adding a class as adding new matter, which is prohibited post-filing.
What you can do during the examination: clarify or narrow your description within the same class. If you filed Class 42 saying “technical consulting” and the examiner finds that too broad, you could amend to “technical consulting in the field of renewable energy systems” within Class 42.
What you cannot do: realize your service actually belongs in Class 40 instead of Class 42 and simply switch it. The only solution is to file a new application in the correct class, with new fees and a new filing date.
If you discover a misclassification early, you might delete the misclassified service from your original application and immediately file a new application for the correct class. You lose the original filing date for that service, but at least you don’t lose months discovering the problem during examination.
This is why getting classification right up front is critical. Fixing it later is expensive, time-consuming, and sometimes impossible without starting over.
Q: How do I protect both my app and the services it provides?
Most digital businesses need dual protection: the software itself as a good and the platform’s ongoing services. The approach depends on how users access your offering.
Downloadable app = Class 9 goods
“Downloadable mobile application for [specific function]”
Cloud platform = Class 42 services
“Providing temporary use of online non-downloadable software for [specific function]” or “software as a service (SaaS) featuring [function].”
Real-world example: A fitness tracking company might file:
- Class 9: “Downloadable mobile application for tracking workouts and nutrition”
- Class 41: “Providing online non-downloadable videos featuring fitness instruction”
- Class 42: “Providing temporary use of online non-downloadable software for personalized workout planning”
Covering both goods and services classes ensures complete protection. If you only filed Class 9, someone else might register a similar name for a Class 42 cloud service. If you only filed Class 42, someone might register your name for a downloadable app.
Many tech companies file in both Class 9 and Class 42 for comprehensive coverage of how consumers encounter their brand, whether downloading software or accessing cloud services.
Q: Does a state trademark use the same service classes as a federal mark?
Most U.S. states that offer trademark registration have adopted the same 1-45 Nice Classification system used by the USPTO, including Classes 35-45 for services. When you file a state trademark application, you’ll typically classify your services using the same class numbers.
However, several practical differences exist:
Filing structure: Many states require separate applications (and fees) for each class, unlike the USPTO, which allows multi-class applications.
Geographic limitation: State trademark protection applies only within a state’s borders and doesn’t prevent someone from filing a federal registration covering the entire country.
Description standards: State offices generally accept the same identification language from the USPTO ID Manual, so you can use the same descriptions when protecting your intellectual property from overseas infringement.
For businesses operating in multiple states or planning interstate expansion, federal USPTO registration is almost always preferable. It grants nationwide rights, prevents conflicting state registrations, and provides stronger legal protection.
State trademarks remain useful for strictly local businesses (a neighborhood restaurant, a regional law practice serving one city) or as a temporary measure while preparing a federal application. But for any company with growth ambitions beyond state lines, go federal from the start, using the same Classes 35-45 service classification system that applies nationwide and internationally.
Your Next Steps to Trademark Classification Success
Understanding service classes is essential, but proper classification is only the first step toward securing comprehensive brand protection. The bottom line: weak trademark applications filed with vague descriptions and misclassified services don’t just fail to protect your brand, they create roadmaps for competitors to file confusingly similar marks in the classes you overlooked. Strong trademark applications with precise class selection and ID Manual-approved language deter others from encroaching on your market position and give you enforceable protection across all your revenue streams.
Your brand is valuable, and in a competitive market where over 500,000 trademark applications flooded the USPTO in 2023, hesitation costs you priority dates and market protection. Every day you delay filing correctly is another day a competitor could file a confusingly similar mark in the classes you need. Under the first-to-file system, being second means negotiating coexistence agreements, abandoning classes, rebranding entirely, or watching your brand get squeezed out of crucial service categories.
Here’s what to do right now:
- Schedule a Free Trademark Strategy Call with Rapacke Law Group’s trademark team to evaluate your specific service class needs, identify coordinated classes that might create conflicts, and develop a comprehensive filing strategy that protects your entire business model, not just the obvious services.
- Map your complete service portfolio by inventorying every revenue stream and customer-facing service your business offers today, plus realistic 1-3 year expansion plans that deserve intent-to-use protection now.
- Run comprehensive trademark clearance searches across all relevant service classes (including coordinated classes) before investing filing fees, using both the USPTO database and professional clearance reports to identify potential conflicts.
- Draft precise ID Manual descriptions for each service category by searching the USPTO’s Acceptable Identification database and matching your offerings to pre-approved language that examining attorneys recognize instantly.
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Your brand deserves protection that matches your ambitions. Proper trademark classification isn’t an administrative checkbox; it’s the foundation of enforceable rights that appreciate as your business grows. Tech companies, in particular, need meticulous class selection because software businesses typically require coverage under both Class 9 and Class 42, plus additional classes for SaaS features, content delivery, and marketplace operations.
Getting service class selection right protects more than your brand name. It protects your market position, your customer relationships, and your ability to scale without legal challenges from competitors filing in classes you overlooked. Investing in a robust trademark strategy today prevents the loss of revenue, market share, and control tomorrow.
Don’t let classification errors hand your competitors a roadmap to your market. Strategic trademark protection starts with getting the classes right from day one, and that requires experienced legal counsel who understands both the USPTO’s classification system and your business’s growth trajectory. Schedule your free trademark strategy call today and secure the protection your brand deserves.
About the Author
Andrew Rapacke is a registered patent attorney and Managing Partner at Rapacke Law Group, where he leads a team specializing in comprehensive IP protection for tech companies, SaaS businesses, and innovative startups. With extensive experience in both trademark prosecution and patent strategy, Andrew helps founders secure trademark protection that supports fundraising, market expansion, and competitive positioning across multiple service classes and international jurisdictions.
To Your Success,
Andrew Rapacke, Esq.
Managing Partner
Rapacke Law Group
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