How To Choose The Right Trademark Class: A Guide for Businesses

Brand protection for a trademark applicant or owner is limited to its classification or the class/classes the “mark” (name/logo/slogan/etc) is registered in. This is why it is important to have a general understanding of trademark classification so that your name/logo gets placed in the accurate class/classes. This blog post will teach you a little bit more about trademark classes, and how a calculated portfolio development can elevate your brand’s visibility alongside protecting your intellectual property.

What is the Trademark Classification System?

The United States Patent and Trademark Office (USPTO) has provided a class system for trademark registrations which distinguishes goods and services into distinct categories. Businesses or individuals have to select the relevant class for their goods or services when applying for registration. It often happens that businesses have to register their trademark in more than one class even if it is a single product or service. You need to pay an additional fee for every separate class you apply for.

The USPTO provides a list of 45 classes for goods and services. 34 classes for goods and 11 classes for services.

Inadequate identification and description of the goods and/or services provided under your mark can make the mark vulnerable to competing forces. For example, non-downloadable software needs to be registered in class 42, as well as in class 09 in order to attain fool-proof protection. A common error in applications can delay or derail adequate protection if not filed properly. Simply put, a mark is protected in the classes it is registered in.

How to Use the Trademark Classification System?

As mentioned above, inaccurate or inadequate identification of your product or service can make the whole process difficult and complicated for you. You would need to conduct some research to determine which category is suited for your brand’s trademark because even though a list has been given by the USPTO, it is not as straightforward as it seems.

For instance, you have an online brand which is involved in providing delivery services for clothes from different brands, you would need to apply in multiple classes such as class 25 (clothing), class 35 (advertising and business), class 9 (electrical and scientific apparatus), and class 39 (transportation and storage).

Things to keep in view when applying for a Trademark Class

Trademark classes are integral to the search & clearance,  and application when you register a trademark. You have to keep certain aspects in mind regarding the system so that you do not face any inconvenience in your registration process.

• One of the important aspects is that an already registered mark will not be in conflict with a similar mark or logo if they belong to two separate categories.  For instance, a restaurant will not be in conflict with with a similar name/logo if it is classified as a financial advising service. The USPTO provides a Trademark ID Manual to identify the class that will apply to a good and/or service. (You can find more information on how to use the manual HERE.)
• If an applied-for mark has similarities (Ex: appearance, sound, &/or connotation) with the name/logo of an already registered mark, then the only way to overcome a refusal from the USPTO is to show that the applied-for mark goods &/or services are not similar to the registered mark’s.
• For new applications, the filing basis for each class is also integral to the application process and can result in variable costs depending on the route chosen. (The difference between the filing basis is discussed further in THIS video.)
• It also directly relates to estimating the USPTO fees involved during the application and registration process. A TEAS PLUS USPTO application is $250/class. This means, an application for a coffee shop can be limited to just one class but could also include other classes that include merchandise (t-shirts/cups/house roast coffee/coffee drink names/etc).

Can I add more classes to my application at a later time?

No. The USPTO does not allow expansion of the classes of goods and services a mark is applied for in the original application. Although they do allow you to narrow or clarify the goods and services. Therefore, to add those goods and services, new trademark applications must be filed. More information regarding adding additional classes can be found in the Trademark Manual of Examining Procedure.

Shouldn’t I just apply to as many classes as possible from the beginning?

Not necessarily, there aren’t many small businesses or entrepreneurs who can afford to spend thousands of dollars in USPTO fees alone. That approach only works for very few and especially not for small businesses or startups. A more coherent approach is to protect what is current and develop a plan to expand the brand’s IP portfolio in a manner that aligns with the business’s goals and ideals. As a business grows and expands, the originally filed trademark application might not cover the current goods &/or services being provided in association with the mark. For example, the coffee shop is now ready to sell its own coffee blends with unique names & logos. This new product offering must be protected by filing a trademark application to add/expand the goods offered under the original mark. There is an opportunity to protect the new product’s name, logo, label, and packaging in separate filings.

Conclusion

How many classes should you start with? When should you expand your portfolio? Multi-class applications, filing basis, and types of trademarks are all topics you should consider when developing a trademark portfolio for your business. Nobody better to help you in this scenario than a trademark attorney.

As you can see, trademark classification is an important step in the overall process of protecting your brand. While it’s tempting to try and cover all your bases by applying for protection in as many classes as possible, a more strategic and coherent approach will likely be more successful in the long run. If you have any further questions or would like to schedule a discovery call so that we can discuss your specific questions and needs, don’t hesitate to get in touch. Thanks for reading!

When developing a trademark portfolio for your business, you should consider the types of marks that are appropriate. A good way to avoid problems with these is by hiring an experienced attorney who can provide you with legal advice regarding this process and make sure everything goes smoothly. We’d be happy to schedule a discovery call with you. During this call, we can discuss your situation in more detail and come up with a plan in line with your business values.

DISCLAIMER:  The information in this blog is not intended nor implied to be a substitute for professional legal deliberation, deposition, or procedure. All content, including text, graphics, images, and information, contained in this video is for general informational purposes only and does not replace a consultation with your attorney.

DrishtiTalks is made available by the law firm, Drishti Law, LLC, for educational/informational purposes. The intent of DrishtiTalks is to provide a general understanding of the law and not to provide legal advice. The use of this site, commenting on posts, or sending inquiries through the site or contact email, does not confirm an attorney-client relationship between you and the Blog, DrishtiTalks, or Website publisher, Drishti Law, LLC. The Blog/Website should not be used as a substitute for competent legal advice from a licensed attorney in your jurisdiction.