Before considering what trademark classes you should choose for 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 or symbol used to identify the source and origin of goods and services. Take for instance the internationally recognized apparel brand Nike. A clothing item, such as a t-shirt, can be identified as a Nike product by examining the tag, which displays the Nike logo.
In addition to goods, trademark classes also cover various services such as advertising and business services, which are essential for business operations, management, and promotion.
Nike’s trademarked logo or “Swoosh” may not appear directly on the shirt, but it should be clearly visible on the tag, to indicate Nike as the source of the goods. Trademarks play a critical role in distinguishing your brand from competitors and protecting the brand’s recognition and goodwill, which can continue to grow over time.
When applying for a trademark with the U.S. Patent and Trademark Office (USPTO), applicants must categorize their goods or services under at least one of the 45 trademark classes (001–045). Of these, 34 classes are designated for goods, and 11 for services. For example, Class 025 covers all clothing items, such as those offered by an apparel brand like Nike, while Class 039 is used for services like shipping and delivery, which are typically claimed by companies such as FedEx (formerly Federal Express).
Understanding Trademark Services Classes
What are Trademark Classes?
Trademark classes are categories used to classify goods and services during trademark registration. The U.S. Patent and Trademark Office (USPTO) uses a system of 45 classes, with 34 for goods and 11 for services. This 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. For example, a clothing brand like Nike would typically be registered under Class 025, while a service like FedEx’s shipping would fall under Class 039. This classification ensures a smoother registration process and helps businesses effectively safeguard their intellectual property.
International Class System
The international class system is a standardized framework used by most countries worldwide to classify goods and services for trademark registration. Based on the “Nice Agreement,” it provides a comprehensive classification system now adopted by over 80 countries. This global standard simplifies the process of registering trademarks across multiple countries, ensuring consistent classification of goods and services. For businesses looking to expand their trademark protection internationally, the system streamlines filings in various jurisdictions, offering a reliable method for securing trademark rights globally.
How do I Find Out What Class My Trademark Is?
Before selecting the appropriate trademark classes, it’s essential to clearly identify the goods and/or services you intend to offer under the proposed mark. The USPTO does not allow the addition or modification of goods or services after a trademark has been registered or is pending. While you can file multiple applications for the same mark, this approach is more costly and time-consuming than properly classifying all relevant goods or services in your initial application. Accurately determining the correct trademark class is crucial to avoid complications with existing registered or pending trademarks.
Section 1 (15 U.S.C. § 1051) of the Federal Statutes of U.S. Trademark Law requires that the trademark be used “in commerce” to qualify for registration. While actual sales are not required, this provision means that the goods or services listed in your application must be actively offered for sale. However, the USPTO does allow applicants to file based on an “intent to use” basis, provided there is a “bona fide intention” to offer the claimed goods or services. This means you can apply for a trademark for goods or services that are not yet available, so it is important to consider all future offerings when determining the appropriate class or classes for your trademark application.
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, clothing laundry services, and business management 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. 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.
Goods Classes
The U.S. Patent and Trademark Office (USPTO) organizes trademarks into 34 classes specifically for goods. Below is the complete list of these goods classes:
Goods (Classes 1–34)
Class 1: Chemicals – Industrial, scientific, and agricultural chemicals.
Class 2: Paints – Paints, varnishes, preservatives against rust/deterioration.
Class 3: Cosmetics and Cleaning Preparations – Soaps, perfumery, cosmetics, cleaning products.
Class 4: Lubricants and Fuels – Industrial oils, greases, fuels, candles.
Class 5: Pharmaceuticals – Medicines, veterinary products, disinfectants.
Class 6: Metal Goods – Common metals, metal building materials.
Class 7: Machinery – Machines and machine tools.
Class 8: Hand Tools – Hand-operated tools and implements.
Class 9: Electrical and Scientific Apparatus – Computers, software, scientific instruments.
Class 10: Medical Apparatus – Surgical and medical instruments.
Class 11: Environmental Control Apparatus – Lighting, heating, cooling equipment.
Class 12: Vehicles – Land, air, and water vehicles.
Class 13: Firearms – Firearms, ammunition, explosives.
Class 14: Jewelry – Precious metals, watches, jewelry.
Class 15: Musical Instruments – Musical instruments and accessories.
Class 16: Paper Goods and Printed Matter – Stationery, printed publications.
Class 17: Rubber Goods – Rubber products for industrial use.
Class 18: Leather Goods – Leather and imitation leather products.
Class 19: Nonmetallic Building Materials – Construction materials not made of metal.
Class 20: Furniture and Articles Not Otherwise Classified – Furniture items.
Class 21: Housewares and Glass – Household utensils, glassware.
Class 22: Cordage and Fibers – Ropes, nets, tents.
Class 23: Yarns and Threads – Threads for textile use.
Class 24: Fabrics – Textiles and fabrics for household use.
Class 25: Clothing – Apparel for men, women, children.
Class 26: Fancy Goods – Haberdashery items like buttons or pins.
Class 27: Floor Coverings – Carpets, rugs, mats.
Class 28: Toys and Sporting Goods – Toys, games, sports equipment.
Class 29: Meats and Processed Foods – Meat products, dairy items, preserved foods.
Class 30: Staple Foods – Coffee, tea, sugar, spices.
Class 31: Natural Agricultural Products – Fresh fruits/vegetables, grains.
Class 32: Light Beverages – Non-alcoholic drinks like sodas or juices.
Class 33: Wines and Spirits (Alcoholic) – Alcoholic beverages except beer.
Class 34: Smokers’ Articles – Tobacco products.
Trademark Services Classes
The U.S. Patent and Trademark Office (USPTO) also categorizes trademarks into 11 classes specifically for services. Below is the complete list of these service classes:
Services Classes (Classes 35–45)
Class 35: Advertising and Business Services – Services related to advertising, business management, and consultancy.
Class 36: Insurance and Financial Services – Banking, financial transactions, real estate, and insurance services.
Class 37: Building Construction and Repair Services – Construction-related services.
Class 38: Telecommunications Services – Broadcasting and communication services.
Class 39: Transportation and Storage Services – Logistics services for goods/people transport.
Class 40: Treatment of Materials Services – Custom manufacturing or material processing services.
Class 41: Education and Entertainment Services – Training sessions or entertainment events/services.
Class 42: Computer and Scientific Services – IT services like software development or scientific research.
Class 43: Hotels and Restaurants Services (Hospitality) – Food preparation or accommodation services.
Class 44: Medical/Beauty/Agricultural Services – Healthcare or farming-related services.
Class 45: Personal/Legal/Security Services – Legal representation or security services.
Understanding these classes is crucial for trademark registration, as they help determine the scope of protection for your brand’s goods and services. By accurately classifying your offerings, you ensure that your trademark application aligns with the correct trademark classes, thereby safeguarding your intellectual property effectively.
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’.”
In addition to the formal registration process, trademarks also have common law rights based on their use in commerce. This means that even without formal registration, a trademark can acquire certain protections simply by being used in the marketplace.
Once a trademark is used in commerce, the owner gains rights to the mark in the geographic area where it is used, as long as the use is continuous and not interrupted. However, registering a trademark provides stronger, nationwide protection and greater legal benefits. It’s important to note that the filing of a trademark application not only establishes the applicant’s claim to the mark but also allows the applicant to assert rights to it in a broader context than common law usage alone.
As mentioned, trademark applications can be filed on an “intent to use” basis. When claiming multiple trademark classes in a single application, each class must have its own filing basis. This means that it is possible to submit an application that includes both classes already “in use” in commerce and classes filed with an “intent to use” in commerce.
Another important consideration is the filing fee for your trademark application. The fee is typically $250 for each class of goods or services you claim. It’s advisable to consult with an experienced trademark attorney to develop a filing strategy. In some cases, goods or services that may appear to belong in different classes can actually be grouped into a single class. If you’re considering global protection, you should also take international trademark classes into account to ensure comprehensive coverage across different jurisdictions.
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. Additionally, legal services are crucial in navigating the complexities of trademark registration and avoiding potential conflicts.
This means several things. First, 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 that the two marks could cause confusion regarding the brand or the identity of goods or services. For example, an applied-for name may be refused due to “likelihood of confusion” if it has a similar pronunciation, spelling, or appearance, or even if its translation in another language is similar to a registered mark.
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 mosot important, 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. For instance, Class 42 computer services encompass a wide range of technological services including design, development, and research related to computers and software.
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 shares 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’re considering registering a trademark, you may wonder whether to file at the state or federal level. The decision depends on several factors, including the type of business you have and the geographic scope you need to protect. A state trademark is registered with a state’s trademark office and provides exclusive rights to use the mark only within that state’s borders. In contrast, a federally registered trademark offers nationwide protection, allowing you to use the mark throughout the United States.
State trademark offices use a classification system similar to the one used by the USPTO (United States Patent and Trademark Office). However, state-level protection is more limited in scope, as it only applies within the state where the trademark is registered. In addition, state trademark offices may offer protection for certain services, such as personal and social services, which cater to individual needs.
Ultimately, if your business operates or plans to expand beyond a single state, you may want to consider federal registration for broader protection. If your business is local or regional, a state trademark might be sufficient.
It is 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 for more information.
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 team of experienced trademark attorneys is here to assist you with every step of the trademark process. From filing and defending trademark applications to conducting thorough conflict searches, we ensure that your strategy is effective and your brand is well-protected.
We specialize in accurately classifying your goods and services to ensure comprehensive protection under the appropriate trademark classes. Whether your business focuses on products or services, we make sure your trademark application is properly filed to cover all areas of your intellectual property.
For additional assurance, we proudly offer our RLG Guarantee on all trademark applications. If your application does not receive a Notice of Allowance for any reason, we will issue a full refund.
Reach out today to learn more about our trademark services and fixed-fee pricing for all intellectual property matters.
