As you continue to use a particular name or brand name related to your products or services, you should consider filing for a federal trademark with the United States Patent & Trademark Office (USPTO) to establish nationwide ownership of your intellectual property. Once you begin using a trademark in connection with goods/services, you have common law rights in that trademark associated with your goods/services (i.e. common law trademark rights). However, common law rights are limited to the specific locations where you are using your trademark. If you intend to sell your product or provide services in more than one state, you should consider filing for a federal trademark registration. A federal trademark registration provides nationwide rights and nationwide notice of ownership.
When applying for a federal trademark registration, the first step should be identifying all the goods and services you anticipate using the trademark with. A trademark applicant must have a bona fide intent to use the trademark in commerce so keep your business plan in mind when creating the list. Once your list is prepared, you will need to identify the specific USPTO classes for your proposed goods and/or services.
The USPTO has 34 classes of goods and 14 classes of services. When deciding whether your list includes goods or services, think about what you will be providing customers. If customers will be purchasing a physical item, that is a good. If you will be doing an activity for customers, that is a service. Generally, the classes are categorized as follows:*
- Class 1: Chemicals
- Class 2: Paints
- Class 3: Cosmetics and Cleaning Preparations
- Class 4: Lubricants and Fuels
- Class 5: Pharmaceuticals
- Class 6: Metal Goods
- Class 7: Machinery
- Class 8: Hand Tools
- Class 9: Electrical and Scientific Apparatus
- Class 10: Medical Apparatus
- Class 11: Environmental Control Apparatus
- Class 12: Vehicles
- Class 13: Firearms
- Class 14: Jewelry
- Class 15: Musical Instruments
- Class 16: Paper goods and Printed Matter
- Class 17: Rubber Goods
- Class 18: Leather Goods
- Class 19: Nonmetallic Building Materials
- Class 20: Furniture and Articles not Otherwise Classified
- Class 21: Housewares and Glass
- Class 22: Cordage and Fibers
- Class 23: Yarns and Threads
- Class 24: Fabrics
- Class 25: Clothing
- Class 26: Fancy Goods
- Class 27: Floor Coverings
- Class 28: Toys and Sporting Goods
- Class 29: Meats and Processed Foods
- Class 30: Staple Foods
- Class 31: Natural Agricultural Products
- Class 32: Light Beverages
- Class 33: Wine and Spirits
- Class 34: Smokers’ Articles
- Class 35: Advertising and Business
- Class 36: Insurance and Financial
- Class 37: Building Construction and Repair
- Class 38: Telecommunications
- Class 39: Transportation and storage
- Class 40: Treatment of Materials
- Class 41: Education and Entertainment
- Class 42: Computer and Scientific
- Class 43: Hotels and Restaurants
- Class 44: Medical, Beauty & Agricultural
- Class 45: Personal
* For a detailed description of the various classes, see TMEP §1400. The USPTO provides a publicly accessible trademark identification manual that can help with the classification process.
Sometimes a trademark may be categorized in several classes. For example, NETFLIX is registered for clothing (Class 25), various bags (Class 18), a downloadable app (Class 009), streaming services (Class 38).
Claiming more than one class for a trademark will require extra filing fees but can broaden the scope of protection. Before your application will proceed to registration, you need to use the trademark on all goods/services identified (or delete the unused goods/services from your application). Once an application is filed, you generally cannot add additional classes. An attorney can assist in selecting the appropriate classes and explain the evidence that will be required by the trademark office to support use of the trademark.
If a third-party has already filed for a similar trademark for similar goods/services, you may encounter roadblocks on the path toward registration. The law does not require that two trademarks be identical and for identical services in order to be in conflict. Instead, the trademark office will consider whether two marks are likely to cause confusion among the relevant consuming public. A likelihood of confusion determination takes into consideration both the similarity of the marks and the similarity of the related goods or services, as well as other factors. Thus, marks that are similar or that may be used on different but related goods may pose a problem. Moreover, while marks registered within the international class for which registration of a trademark is sought may present higher hurdles to registration than marks registered in other international classes, such other-class marks may, nonetheless, present challenging hurdles to registration if the other-class marks are similar and associated with similar goods or services. Thus, a per-filing trademark search is recommended. At a minimum, the USPTO’s Trademark Electronic Search System (“TESS”) should be searched for identical trademarks. An attorney will have access to databases that can conduct a phonetic search as well. It may be helpful to consider consulting an attorney at TraskBritt when conducting an initial trademark search as well as compiling a trademark application.
As you begin the trademark application process, our attorneys at TraskBritt can guide you with their expertise in trademark protection and prosecution. After you successfully register a trademark, should a party infringe upon your trademark, the federally registered trademark confers legal protection. Among the many fields of expertise at TraskBritt, trademark protection, including litigation, is one area of our diverse intellectual property practice.
Article written by Victoria Cheng, Ph.D.