The United States Patent & Trademark Office (USPTO) uses what is called the Nice Classification of Goods and Services. The Nice Classification is the standard used by the majority of countries around the world that register trademarks. Basically, the USPTO divides trademarks into 45 different categories. 34 of these categories identify products and 11 categories identify services. These categories are called “international classifications” (or simply “classes”) and are used by the USPTO to differentiate and keep track of the hundreds of thousands of trademarks that are registered in its databases every year. The trademark class system is also used to determine whether certain goods and services are related and whether such goods and services travel in the same channels of trade.
A common misconception is that having a trademark means you legally own a particular word or phrase and can prevent others from using it. However, you don’t have rights to the word or phrase in general, only to how that word or phrase is used with your specific goods or services. Therefore, a trademark applicant applying for a federal trademark must: (1) select the appropriate trademark classification in connection with the goods and/or services to be provided; and (2) appropriately identify and describe the goods and/or services in connection with the appropriate trademark classification.
If a trademark applicant seeks to register a federal trademark with the USPTO in the wrong trademark classification, or improperly identifies the goods and/or services to be provided, the trademark application may be refused and all USPTO fees are generally nonrefundable. Our trademark attorneys see misclassification issues frequently and it is a hard pill to swallow for many applicants when they lose all their money paid to the USPTO during the application process – which, if applying in multiple classes, can be significant. It is important to note that holding multiple trademark registrations covering multiple trademark classes is not uncommon for companies that provide a broad spectrum of good and services.
While trademark classifications are an essential part of the registration process, they can be very hard to understand. Spending time to understand and research the appropriate international trademark classifications prior to submitting a trademark application is critically important. For example, the trademark classification 25 includes primarily clothing, hats, and shoes, while the trademark classifciation 14 covers jewelry, watches, and clocks. Similarly, if a trademark is used in connection with financial planning services, it would fall into trademark classification 36. But, if the same trademark was used for providing financial planning seminars, courses, classes, workshops, it would be classified in class 41. Further, if the same trademark was used for providing financial planning publications, namely books, study guides, and other printed instructional/educational materials, it would be categorized as class 16. As you can see, selecting the appropriate trademark classifications can get complicated!
Click the following link to learn more about selecting and navigating the 45 different trademark classes.