How Do I Choose a Trademark Class

/How Do I Choose a Trademark Class
How Do I Choose a Trademark Class 2019-02-19T11:14:42+00:00

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.

GOODS

Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. Explanatory Note This class includes mainly paints, colorants and preparations used for the protection against corrosion. Includes, in particular: paints, varnishes and lacquers for industry, handicrafts and arts; dyestuffs for clothing; colorants for foodstuffs and beverages.
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks.
Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; iron mongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.
Hand tools and implements (hand operated); cutlery; side arms; razors.
Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Vehicles; apparatus for locomotion by land, air or water.
Firearms; ammunition and projectiles; explosives; fireworks.
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.
Musical instruments.
Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks.
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Building materials (nonmetallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal.
Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; un-worked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
Yarns and threads, for textile use.
Textiles and textile goods, not included in other classes; bed and table covers.
Clothing, footwear, headgear.
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.
Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Alcoholic beverages (except beers).
Tobacco; smokers’ articles; matches.

SERVICES

Advertising; business management; business administration; office functions.
Insurance; financial affairs; monetary affairs; real estate affairs.
Building construction; repair; installation services.
Transport; packaging and storage of goods; travel arrangement.
Treatment of materials.
Education; providing of training; entertainment; sporting and cultural activities.
Scientific and technological services and research and design relating thereto: industrial analysis and research services; design and development of computer hardware and software; legal services.
Services for providing food and drink; temporary accommodations.
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.