This is Part 1 of the Trademark Classes Explained Series. Definitely check back for Parts 2 and 3 if you can (they will be posted next week). Each part of this Series is different. Part 1 is all about how classes work and why they are so important. Part 2 is a list of the trademark classes that you can potentially use as a tool in class research. Lastly, Part 3 is about a 4-step strategy that may be used to easily research and select the appropriate trademark classes for your goods and/or services in your trademark application.
Let’s get into Part 1….
If you’ve looked into registering a trademark, you know that the trademark application process and trademark fees are all about the classes. Trademark classes (“classes”) are the categories used by the United States Patent and Trademark Office (“USPTO”) and other international trademark regulatory bodies to easily classify and identify groupings and types of goods and services. You may also know that there is simply not a “flat fee” for a trademark application, but rather the trademark application fee is determined by the number of classes that are included in your application. For example, as of the date of publication, the USPTO filing fees are as follows: to file a TEAS PLUS trademark application is $225 per class of goods/services, TEAS Reduced Fee (RF) is $275 per class of goods/services, or TEAS Regular is $400 per class of goods/services. You will notice that the TEAS PLUS is the cheapest of the three filing options, but it has the strictest requirements, with one of them being that the trademark applicant must identify the goods and/or services by class using the USPTO Trademark ID Manual.
These classes are also extremely significant to you and your trademark application because trademark classes don’t merely identify your goods and services, but these are essentially the areas that you are “carving out” for protection when you register your trademark with the USPTO.
The classes are actually based on the forty-five (45) International Trademark Classes (“ICs ”or “IC”), based on the Nice Classification (“NCL”), which was established by the Nice Agreement in 1957. So without going too deep into the history of it all, this is a long-standing international classification system that is used to identify goods and services in the registration of trademarks.
The 2018 version of the eleventh edition of the NCL came into force on January 1, 2018. So heads up, as a result of this, on January 1, 2019, the USPTO will publish new and updated goods and services identifications and classifications in the USPTO ID Manual to reflect the Nice Classification, Eleventh Edition, Version 2019, which will become effective January 1, 2019.
At this point you may be wondering: What’s the deal with trademark classes? Is there an easy way to understand how they work?
The answer is “YES.” Let’s explore an example of how classes work, that really shows why picking the correct classes to describe your goods and services is so important.
“Pandora” provides a pretty good illustration of how classes work and the power of classes in the trademark process. You have “PANDORA” jewelry, “pandora” music, and many other "Pandora” registrations (for medical supplies, home appliances, etc.) that may not be as well known, yet all of these trademarks coexist ALIVE and well in the USPTO’s Trademark Register.
There’s no need to read each class description below too closely, because the examples are listed out in this way mainly to show how seemingly identical trademarks can coexist, largely in part because of class differences.
Each bullet point below reflects a particular class that was selected as appropriately identifying the goods and services affiliated with the trademark. Accordingly, these are the areas carved out for protection based on the trademark registrant’s trademark application. Let’s take a look at the examples.
EXAMPLE 1: PANDORA Jewelry
IC 014. US 002 027 028 050. G & S: jewelry; paste jewelry; jewelry with natural or artificial precious stones, semi-precious stones; jewelry made with or of man-made stones, crystals and/or cubic stones, gemstones, pearls; gold and silver jewelry.
IC 035. US 100 101 102. G & S: Wholesale store services with jewelry; retail store services with jewelry and other fashion accessories; online retail store services featuring jewelry and other fashion accessories.
EXAMPLE 2: PANDORA Music
IC 009. US 021 023 026 036 038. G & S: Headphones; cell phone cases; consumer electronic devices, namely, digital audio players; devices that broadcast audio content, namely, radios, headsets, personal audio devices used with headphones or earbuds, and other apparatus for broadcasting, transmission and/or receipt of audio entertainment and informational programming; super-sized blank CDs as awards; decorative magnets, refrigerator magnets.
IC 016. US 002 005 022 023 029 037 038 050. G & S: Writing instruments, pens, markers; notebooks; playbills, event programs; stickers.
IC 018. US 001 002 003 022 041. G & S: Backpacks; bookbags; sports bags; carry-all bags.
IC 021. US 002 013 023 029 030 033 040 050. G & S: Mugs; water bottles, sold empty; insulating sleeve holders for beverage cans and bottles.
IC 025. US 022 039. G & S: Sweatshirts; T-shirts; hats; baby clothing, namely, one-piece garments for infants.
IC 028. US 022 023 038 050. G & S: Foam fingers, hand-shaped foam mitts; musical toys, namely, plastic toy horn sound amplifiers.
IC 035. US 100 101 102. G & S: Advertising products and services of others; conducting incentive awards programs to promote the sale of products and services of others, including provision of events and music services of artists.
IC 038. US 100 101 104. G & S: Streaming of music and comedy of others over a global computer network and other communications networks; Internet radio broadcasting services.
IC 041. US 100 101 107. G & S: Planning and conducting music festivals; entertainment services in the nature of live music and comedy performances; arranging and conducting concerts; entertainment services in the nature of providing on-line non-downloadable videos featuring music and comedy.
IC 042. US 100 101. G & S: Providing a web site featuring technology that allows users to input their selections of characteristics for music, comedy and other types of content, namely, recorded audio content, or that identifies characteristics of music, comedy and other types of content, recorded audio content, based on user selections, so that profiling can be completed and recommendations provided based on those characteristics; providing non-downloadable software provided over global computer networks for creating entertainment and information profiles based on user selections of entertainment and information options or based on user specification of characteristics of entertainment and information, and recommending other entertainment and information based on such selections and specifications.
EVEN MORE EXAMPLES….
Even with the exhaustive class carve-outs above between the top two “Pandora” registrants, there are still even more instances of other successful “PANDORA” trademark registrations for classes that differ from the classes already “carved out” above, from medical supply and home good companies.
The Point is…Classes are Powerful because They Help Make Trademark Coexistence Possible and Avoid Confusion.
The Pandora example is so helpful in understanding classes, because you see that the mark “PANDORA” has been successfully registered as a trademark several times over by different trademark owners. The possibility of coexistence of a substantially similar trademark is due in large part to class distinctions. If you think about it, the power of class distinctions even meshes well with the essence of the trademark infringement test used by courts, which is the likelihood of confusion test. This test uses a list of factors to answer the question: Does this person’s use of the mark cause a likelihood of confusion for the other person’s use of the mark in the average consumer? Non-surprisingly, one of the factors assessed in the test is the “relatedness of the products or services.” If you think about it, this is indirectly related to class differences. The general vibe here is that there is less likelihood of confusion, when everyone “stays in their lane.”
Although coexistence of similar marks is possible, this does not mean that a USPTO examining officer will not raise a challenge during the trademark examination process. Similarly, it does not mean that another trademark owner may not raise a challenge to the trademark when it is published for opposition in the Official Gazette (which is when the USPTO publishes the trademark in a way that provides an opportunity for the public to oppose the trademark’s registration).
You may be wondering what is up with all of the numbers in a registered trademark’s class coding? (I.e., IC 041. US 100 101 107)
At first glance the trademark class numbering system may look like The Matrix, but with a closer look it is not such a big deal. You may even be suspecting that “IC 041” means international class code 41, and you are correct. The three digit IC # will be either of the 45 international codes, 001 through 045. But you may still be looking at the string of numbers that follow US (i.e. US 021 023 026) like you are deciphering code.
But here is the beautiful thing…You can safely ignore the extra numbers that follow “US” for your trademark application purposes. These numbers are the US trademark classification codes that are rarely used externally, but instead are mainly used within the USPTO by its examining officers and agents for internal purposes.
The international class codes are what really matter, and the USPTO trademark applications ask questions pertaining to the 45 international codes (not the US class codes). Trademark Classes Explained Series: Part 2 has the complete list of the 45 international class codes that you will be working with, so have a look.
Best of luck! Thanks for reading.
**This post is not intended to be a substitute for legal advice. Consult a licensed trademark law attorney for specific trademark law questions that you may have.**
Coming to the Biz & IP Law Blog Next Week: