This is Part 3 of the Trademark Classes Explained Series. No worries if you have not checked out Parts 1 and 2 yet, because you can easily just jump right in here, and check out Parts 1 and 2 later, if you’d like. (The links are also included at the end of this post.)
The focus of Part 3 is on a strategy that may demystify the trademark class search and selection process, to help you confidently identify all of the goods and/or services that are affiliated with your trademark.
Without a game plan or a solid strategy, researching trademark classes may seem like an overwhelming task. I’ve even heard people say that completing this task induced mild anxiety and worries of “missing something” or not identifying all of the appropriate trademark classes in the USPTO trademark application. But definitely forge ahead past these feelings, because the classes that you select while registering your trademark are extremely important. By selecting classes, you are effectively “carving out” registered areas (or “classes”) of protection for your trademark. So when approaching this task just remember the old saying: “Plan your work, and work your plan.”
It’s my hope that you will find these 4 steps to be a beneficial tool in your trademark class research. Perhaps you can even take the steps and create your own expanded search process - whatever it takes to bring you peace of mind, clarity, and confidence to properly identify all of your goods and/or services.
You may be wondering: Is there an easier way to research and select trademark classes for your trademark application?
Thankfully for us all, the answer is YES. To answer this question, I’m going to share a streamlined version of what I do when researching and selecting trademark classes. However, two big disclaimers here: what works for me may not work for everyone else, and there are probably many techniques and methods that can all lead to the same place. So here’s one method to consider:
THE 4-STEP TRADEMARK CLASS SELECTION PROCESS
FIRST, brainstorm about the keywords that are used to describe your goods and/or service. Write them down. You have extensive knowledge of your product and service offerings and can use this on your own, or in tandem with your lawyer to make sure that all of the appropriate classes are selected in your trademark application.
SECOND, search the USPTO Trademark ID Manual database using your keywords related to your product or service to find the relevant class or classes. Write these class numbers down. These classes will be used to identify the goods and/or services that you are. Just a heads up, there is also a newer (unofficial) version of the Trademark ID Manual database that the USPTO is testing and encouraging users to try out, called the Trademark Next Generation Application Trademark ID Manual. According to the USPTO it features more advanced searching and browsing capacities, and provide comments and suggestions at your option.
THIRD, double-check your class findings from the second step, by manually combing through the 45 international trademark classes to see if you notice any new categories that seem applicable, that you may have missed in the second step. Add these additional class numbers to your list of classes. These international classes are used by the USPTO in its trademark applications (TEAS, TEAS RF, and TEAS Plus), as mentioned in Part 1 of the Trademark Classes Explained Series. Also, Part 2 of the Trademark Classes Explained Series, contains a list of the 45 international trademark classes which you can easily access at anytime and use to do your double-checking for this step.
FOURTH, take your list of compiled classes form all the steps above, and review the WIPO explanatory notes for each class on your list, and modify trademark classes if necessary. The international class explanatory notes are so important, because they have examples of what the class does and does not include. These explanatory notes can be found on the World Intellectual Property Organization’s (WIPO’s) Nice Classification database webpage.
Another amazing feature of the explanatory notes, is that in many cases if a certain item or type of service is not included in a particular class (even when all reason suggests it should be in that class) the explanatory notes will drop a reference to the correct class. Use these references to adjust your list of classes.
Here’s an example…let’s imagine that you have a bandage and medical gauze product in commerce under the trademark BANDA-BOOBOO™. Your research may have led you to Class 10 (Surgical, medical, dental and veterinary apparatus and instruments). This seems like a reasonable selection. Now, here’s where WIPO will become super helpful for you as a research tool. The WIPO Explanatory Note for Class 10 will tell us that although Class 10 seemed like a match, Class 10 does not include, “medical dressings and absorbent sanitary articles….plasters, bandages and gauze for dressings” and redirects us to Class 5 (Pharmaceuticals, medical and veterinary preparations, including “materials for dressings” among other things). Based on this exercise we will modify our class research list for BANDA-BOOBOO™ by removing Class 10 and adding Class 5.
Sounds easy enough and manageable, right?
So let’s recap. Here’s the summary of the four steps:
Here’s a BONUS, to triple-check your findings. Think about your competitors that have registered trademarks with the USPTO for similar goods or services. Search and pull up their trademark registrations and take a look at the classes they have selected. Ask yourself whether this class describes a good or service in your business model as well. If so, add it to the list.
In closing….At this point you should be feeling really confident in your trademark class research. **WOOSAH** Continue to be resourceful, to research and understand the issues that affect you and your business, and to know when to rely on others to get things done. Best of luck! Thanks for reading.
I’d love to know if you found this article helpful, or if you have any special research techniques that you use, or that you have developed while doing trademark class research. Send me an email at email@example.com and let me know.
**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.**