This blog is related to my video What trademark class do I need? found on YouTube. In this blog, we discuss what a trademark class is and how an entrepreneur will know which one(s) they need to register. More about the U.S.P.T.O.. O’s trademark class system can be found by visiting their page -the Classification and Identification of Goods and Services – Tep.
If you are building a brand you want to ensure you protect it as broadly as possible. There are many facets to accomplishing that protection. When thinking about federal trademark registration one of the most important pieces to that puzzle is making sure you register in the right class and subclass. This week’s question that I focused on providing an answer to was- what trademark class do I need. The potential client on the phone asking that question also slipped in the side note – oh and by the way what is a class anyway.
Answering the first question is a little more complex than the secondary one. To that end, I will start with answering the second question – what is a class. A trademark class is not a place where you go to learn more about trademarks. Well, actually it could be, however in this context it is not. In this context, a trademark class is something that is associated with your trademark and or service mark that provides information on exactly what goods and or services your mark represents. When you or your attorney goes to submit a registration for your trademark they must indicate a class. That class tells the trademark examiner and the public if you are making clothes, creating haircare products, consulting or developing software just to name a few.
Trademark classes are a part of The Nice Classification (NCL) system, which was established by the Nice Agreement. The United States Patent and Trademark Office uses this international classification of goods and services for the registration of marks. There are forty-five (45) total classes. Thirty-four (34) of these categories are used for goods and the remaining eleven (11) classes or categories are for services. Each category will have subclasses- so a good review and understanding of what each contains is important before proceeding with the registration process.
When you begin to think about what class or classes you will need for your brand remember that your ownership or preeminence with that mark generally speaking only extends to the class or classes in which you are registered. The first thing you have to decide is how will you use the mark in business if you are just starting out or if you are already in progress what are all the goods and or services your mark is selling things in the world of commerce. For those who are right at the beginning steps of building their brand this is an important step. I would suggest that you build a written roadmap for your business with approximate timelines. That is to say, it isn’t necessarily true that what you are doing today is all that you will be doing 6, 12, or 18 months down the road. If you have a larger vision for your brand that you want to fulfill in a set time frame, you should think about protecting it in all applicable areas.
That means as an example if you are reselling handbags today, and in six months you will be teaching customers how to style accessories and in 18 months you will be creating custom handbags and manufacturing them all under the same mark Juju’s Bag Life these are each separate classes that you will need to register the mark in.
So, the answer to the first question – what trademark class do I need is it depends. It will depend on what you are doing with the mark and how soon you will be doing the next activity in your brand blueprint. Additionally, there are some complexities with trademark classes that require a little research. If you are a consultant or otherwise provide services that are of the advice-giving nature they are classified according to the activity. So although they are both consultants a mark that represents a finance consultant would be class 36 and a mark the represents beauty consultant would be class 44. Another issue with deciding the trademark class is tied to the delivery method. For example, if are you selling/licensing the software itself and allowing people to download the entire software product to their phones, or if are you providing a “Software as a Service” (or SAAS) in which the majority of the actual software used by your customers remains on your company’s computer servers you will need to make sure of the appropriate class. If customers download the entire app to their phones (think the non-web version of Microsoft Word), then you would have a “good” under International Class 9 under the NICE agreement. If you are providing access to servers that actually run the software on behalf of your customers (think Google Docs), then you have a “service” under International Class 42. If your product includes both the “goods” of software that users download and the “services” relating to accessing software running on your servers, then your trademark application should designate both Class 9 and Class 42.
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If you need legal counsel in this area reach out to my firm and we would be happy to help.
As always, I hope this was useful and remember we are here – when you need us where you are®.