Deciding on a trademark is an important part of successful branding. Many companies then register the mark for protection at the federal level. Part of this process requires considering how the trademark should be classified.
Keep in mind that on your application you must select from one or more of the available categories, which are based on the goods or services you offer. The USTPO provides 45 classes to choose from and, once selected, your trademark protection is limited to that specific area. Further, if you select the incorrect class, your application may be denied.
Note that your application fee is based on the number of classes you choose to register your mark in. In other words, the more classes you select, the higher your cost of filing will be. As you might imagine, it can be confusing to figure out which classes to select. Here are some tips to help you navigate the process.
Determine What Your Business is Selling
As discussed in a previous blog post, the purpose of a trademark is to protect your brand. It helps make sure that potential customers are not confused in the marketplace. To that end, it is critical that your first determine what it is exactly that your business is selling. This process necessarily requires thinking about this question from the consumer’s point of view.
With that in mind, you should only concern yourself with finished products, not the components that make them up. For example, let’s say that you sell jewelry made out of metal. In this case, you would select the jewelry class on your application, not the metal class.
In addition, keep in mind that just because your logo appears on a variety of products, this does not necessarily mean that you are in the business of selling those items. For example, most businesses have a website that contains their company branding. However, unless you build websites, you wouldn’t classify your business as a web design service.
Similarly, let’s say that you have employee t-shirts with your corporate logo on them. Now, unless your business creates and sells t-shirts, you would not select the apparel classification on your trademark application.
Goods or Services
In order to classify your trademark, you first need to determine whether you are selling goods or services. This is important for proper categorization as classes 1-34 are reserved for goods, while classes 35-45 are for services.
For many businesses, it is clear whether the company sells goods as opposed to services. If you are in the landscaping business, for example, you are offering a service. By contrast, if you sell jewelry, you would be a goods merchant.
But, sometimes this distinction is not obvious and the company may be in the business of selling both goods and services at the same time. For example, if you have a coffee shop that also sells coffee beans, you would have two classes to register. One for the restaurant service (class 43) and one for the coffee bean products (class 30).
Submitting the Required Specimen
Bear in mind that most businesses must provide a “specimen” as part of the trademark application. This simply serves as proof that you are actually using your logo or name in the marketplaces. But note that a specimen means something more than a picture of your logo.
For example, there must be documentation of the mark being used on things such as packaging, clothing labels, advertisements, and/or websites. Keep in mind that you must provide a specimen for each class in which you are applying.
While this might seem excessive, the purpose is to keep a business from blocking every possible good or service merchant that might have a similar mark. In other words, the intent is to make sure that trademark protection only applies to companies that are actually engaged in commerce.
With that in mind, the following is a list of items that DO NOT qualify as specimens:
- Business cards
- Stationary
- Merchandise with your logo (t-shirts need your logo on the tag itself)
Now, you do not need a specimen if you are filing an “Intent to Use” trademark application. We will get into that discussion in another blog.