Understanding Trademark Classification
Oct. 20, 2022
When people come up with a name, logo, symbol, phrase, or image for a new product or service they’re offering, their first instinct may be to seek trademark protection, as if that’s as simple a task as registering a vehicle you just purchased. Just fill out a form, pay your fee, and you’re done. But, trademark registration is not that straightforward.
First off, the federal trademark process is administered by the U.S. Patent and Trademark Office (USPTO), which has stringent requirements for qualifying a trademark for registration. Requirements include proving your mark’s uniqueness and establishing its commercial connection.
Then, even when you have all the supporting evidence you need, you must make sure to choose the proper classification for your mark. Choose the wrong one, and you likely won’t be approved.
Broadly speaking, there are two classifications for trademarks – goods and services – but within these broad categories, there are more focused categories. For instance, under the goods category are 34 separate “classes,” including overlapping or conflicting items such as staple foods, then meats and processed foods; chemicals, and then pharmaceuticals; and so on.
Under services, there are 11 more classes, for a total of 45 to choose from. In some cases, you may even decide to register your mark under different classes, so long as they all legitimately apply.
If you’re in or around Kansas City, Missouri, and are seeking trademark protection for your goods or services, contact Ream Law Firm, L.L.C. Their patent and trademark attorney can help you navigate the system to speed up the approval process and make sure your mark is registered under the appropriate category or categories.
With more than 25 years of experience, Dale J. Ream has helped hundreds of others like you successfully complete the trademark registration process. Ream Law Firm, L.L.C. also proudly serves clients throughout Jackson County, Missouri, and Johnson County, Kansas.
What Are Trademark Classes?
The USPTO defines the importance of classifications as a means “to organize the goods and services used in applications and aid in searching our database of registered and pending trademarks.” The agency publishes what it calls an “ID Manual” with pre-approved descriptions of goods or services and their classifications, which can be used in your application.
The classification system follows international standards and agreements. Classifications are numbered 1 through 45, and if you choose the wrong classification, your application will likely be rejected (and your fee not returned). So, you need to choose wisely for the category you wish to register in. As the USPTO notes, however, “goods and services are never in the same class.”
The goods classification obviously pertains to items that can be sold, and the 34 classes listed in the overall goods category run the gamut of products that can be sold (or even given away). In addition to the classes listed earlier, such as chemicals and staple foods, there are additional classes such as “toys and sporting goods,” “clothing,” “wines and spirits,” “leather goods,” and more.
Under the services category, classes include but are not limited to: “telecommunications,” “advertising and business,” “building construction and repair,” “education and entertainment,” “computer and scientific,” and more.
It’s important that you choose the proper category, as a wrong choice can lead to rejection. Dismissal of your application many times derives from submitting a description that does not properly categorize your particular goods or service. The USPTO uses the example of someone seeking a trademark for “black short-sleeved t-shirts,” and notes: “You do not need to identify your goods as ‘black short-sleeved t-shirts’. Instead, you could list them as ‘t-shirts,’ ‘shirts,’ or even ‘tops as clothing.’ All three of these options are accurate and acceptable.”
Sound confusing? It can be, and that’s why you need the assistance of an experienced trademark attorney not only to choose the proper classification but also to submit a qualifying description.
Why Are Trademark Classes Important?
If you don’t submit your application under the proper category, you face dismissal of your registration and then must begin all over with identifying and describing the appropriate classification, along with a new application and filing fee.
Another important consideration in choosing the appropriate classification is to facilitate conducting your research. Before submitting your application, the USPTO requires you to conduct a search to see whether someone else is using your proposed mark. Searching for the proper class of goods or services speeds up the process.
The same mark can sometimes be used in different ways for different trademark registrants, and that’s another reason proper classification is important. The mark you want to register may be in use under another category, but since your application is for a different category, your similar mark could be approved as well.
As an example, Dove Soap and Dove chocolate fall into two separate categories, so each can claim “dove” as part of their registration. The standard is that two trademarks can coexist using the same mark so long as they cause no confusion among consumers or users.
Rely on the Skilled Counsel of Ream Law Firm, L.L.C.
The USPTO allows you to apply for a trademark registration online. Some may think all they have to do is go online, describe their mark and its classification, pay the fee, and then wait for almost-certain approval. The reality, however, is not always so straightforward or simple.
Trademark applications, even if supported and justified properly, can take months, or even more than a year, before you receive a final decision. If the decision is “no,” then you face the challenge of amending your application or ultimately filing an appeal.
If you have a trademark you wish to register for nationwide protection, reach out to Ream Law Firm, L.L.C. Their patent and trademark attorney can help you research your mark to verify its uniqueness (by category) and then submit a comprehensive application that can help speed the process toward approval.
Trying to go it alone can result in delays and perhaps even rejection. Don’t take the chance.