One of the important steps you need to take before applying for trademark registrationis to make sure you know the right class of goods or services you need your trademark to cover. If you choose the wrong class, you will either not be able to register your trademark or, you will be able to register your trademark, but you will not be able to switch to another product or service class that you need to cover.
The list of trademark classes used by U.S.P.T.O. (U.S. Patent and Trademark Office) includes 45 categories divided into 34 product trademark classes and 11 trademark service classes. Choosing the right class is not always easy and class names can sometimes be confusing. That is why you need to know a few tips that will help you make the right decision.
Use the Trademark Identification Manual
The trademark identification manual offered online by USPTO includes a list of trademark classeswith pre-approved descriptions of products or services for each class. You can search the manual online for any product or service you need. If you search „books„for example, you will receive the list with all the product and service classes for this term. You will notice that “audio books“ and „digital books“ are class 9, „anniversary books“ and „book covers“ are class 16, „book bags“ are class 18, „book rental“ is class 41 and so on. It is important to evaluate each category of products or services and deciding the right class for your trademark.
Is it a Good or a Service?
Before choosing the right class, you first need to make sure you know very clearly if what you are offering is a product or a service. While by product or good we understand a physical item that people purchase from you, by service we refer to an activity that you perform for your customers. For example, cloths, furniture, toys are goods, while cleaning, accounting, dental care are services.
But the difference is not so easy to see all the time. An example used by the USPTO to help you choose the right product or service class refers to T-shirts:
- If you are selling t-shirts, you need to look for the right product class
- If you are receiving t-shirt from your customers and you custom print them, you need to look for the right service class
- If you are providing the t-shirts and you are also custom printing them, you need to register trademarks for both product and service.
- If you have a retail store selling t-shirts, you need to register trademark for a retail service.
Is Your Trademark for Your Whole Company, or Just One Product or Service?
Another question you need to ask before applying to register a trademark is whether your trademark applies to your business as a whole (company name, company logo) or to particular products (product names, product labels, product logos). You need to make this distinction because a class that might be right for a trademark you want to register for your company as a whole might not be suitable to be registered for a trademark referring to a particular product.
Choose a Trademark Classification for the Goods Or Services on Which You Actually Use (Or Intend to Use) Your Trademark
When you choose a trademark class you need to take into consideration the difference between the products or service that you actually provide and the things you are using your logo or trademark on. For example, if you are selling „wine“, you are considering class 33, but you don’t need to also register class 16 including printed wine bottle labels, even if your logo appears on the labels. The product you are selling is the wine, the labels are sold to you probably by the same supplier providing the bottles.
Also, list in your application only the products or services you are actually providing or you plan to sell in the future. Avoid including a bunch of products classes just because they resemble what you do now. If you are not sure you have chosen the right product or service classes for your trademark application, ask for a professional advice.
Choose a Class that Describes the Finished Product, Not its Ingredients
Another trap in which you might fall while choosing product or service classes is choosing a class that describes the ingredients of your product, and not your product.
Wrong product and service classes included in trademark application are one of the frequent reasons registrations are delayed or derailed. It is important to take the time to make sure you understand exactly what you are selling and what you are registering.
If you are not sure, contact us and benefit from the professional advice of an independent intellectual property lawyer. Best advice with affordable costs.
This portion of the site does not represent legal advice and it is meant for informational purposes only. Statements and opinions belong to the author, not the company, and have not been evaluated by us for accuracy, completeness, or conformity with changes in the law.