What is a Trademark Class and How Do You Choose the Correct Trademark Class to File?

What is a Trademark Class and How Do You Choose the Correct Trademark Class to File?

When you file an application for a trademark, you are required to select the trademark class, or classes, in which your particular product or service belongs. This might lead you to wonder what a trademark class is and how it is you choose the correct trademark class for your particular product or service.

What is a Trademark Class?

The United States Patent and Trademark Office (also known as the “USPTO”) utilizes something known as the “Nice Classification of Goods and Services”, which is a system created to classify goods and services for the purpose of registering trademarks. This classification system is recognized by many countries throughout the world and helps provide a better system for consistency in trademark laws between countries. The system also makes conducting a federal trademark search much simpler because the search can be narrowed down to particular trademark classes.

The Nice Classification of Goods and Services groups different products and services into categories known as “trademark international classes”. Each trademark class is assigned a number and makes up a certain type of products of services. The Nice Classification List (or “NCL” for short) consists of 34 goods and 11 services. For example, if your products were related to household or kitchen utensils, you would file your trademark registration under Class 21. If your products were related to carpets, rugs, linoleum, mats or some other material that covers flooring, you would you’re your trademark registration under Class 27. If you provide legal services, you would file your trademark registration under Class 45.

What is a Trademark Description?

In addition to selecting the appropriate trademark class for your products and/or services, you will have to draft a complete description (identification) of the goods and services you will be providing. This description is very important because it is what the USPTO will use to compare your application to other trademark registration to determine whether there is a conflict. When describing the goods and services you want to sell or provide, it is helpful to use somewhat broad language, but not too broad. The reason for this is because you cannot broaden the identification after the application is filed. However, if the description is too narrow, you could give up valuable trademark protection. An attorney can assist you with drafting an accurate but broad description of your products and/or services.

How Do You Choose the Right Trademark Class for Your Product or Service?

On the USPTO’s website, you can go through their Acceptable Identification of Goods and Services Manual to help you decide which trademark class should be filed for your particular product and service, but while you may initially determine that your products or services fall under one particular class, you may also neglect to address other classes that may be applicable to your trademark. This can become a costly mistake down the road if you ever wish to defend yourself against trademark infringers and find you don’t have the proper trademark class registration. A qualified trademark attorney will help you determine and advise you about which trademark classes to file for.

It is also important to note that your registration fees are based on the number of trademark classes you are applying for. For example, companies like Google, Apple and Disney have dozens of trademarks because their goods and services fall under so many different trademark classes.

Understanding more about trademark classes and identifications will help you understand more about trademark laws and why trademark registration fees may vary. Make sure that you consult with a qualified trademark attorney to ensure you file trademark registrations accurately and for all of the trademark classes that are applicable to your products and/or services.

WINTER LLP® is a corporate, transactional, regulatory and intellectual property law firm focused on traditional and emerging markets, with offices in Orange County, San Francisco, and Arizona, servicing clients around the world.

Missing the “Mark”: Top 7 Trademark Mistakes People Make

If you’ve never been involved in the process of registering a trademark and protecting the valuable ideas and brand names of your business, it is very easy to make mistakes. Trademark registrations are actually quite complicated and counterintuitive at times. There are several steps, procedures and maintenance requirements that must be followed or your brands may be in jeopardy of infringement or cancellation proceedings. If you aren’t very careful, you can severely jeopardize all of your hard work, creativity and potentially thousands or millions of dollars in value to your company.

Here is a list of the top seven trademark mistakes people make.

Trademark Mistake #1: Choosing a Generic Mark.

The primary purpose of trademarks is to prevent consumer confusion. Trademark law was created to protect marks from competitors that may create similar or infringing names. Marks should be unique and not descriptive of the particular product. For example, a soda company would not be allowed to register a trademark for a soda with the mark “Soda Pop”. This is far too descriptive and generic of the actual product.

Trademark Mistake #2:Not Being Able to Show Use of Your Mark.

Part of the application process for a trademark is proving use of the mark in commerce, i.e. available for purchase or use by consumers. By showing the USPTO that the mark is in use on a website, product label, product image or brochure, and by several other means is required before the USPTO will issue you full registration of that mark.

Trademark Mistake #3:Failing to Do Your Research.

Before you decide to use or register your mark, it is imperative that you have an attorney conduct a clearance search for you to ensure nobody else is using or has registered the same or similar mark in your class of goods. This is a good way to get slapped with a cease and desist letter and face potential damages for infringement. Not to mention the waste of time, effort and marketing dollars getting your company or brand off the ground.

Trademark Mistake #4: Not Displaying Your Registered Trademark Symbol Properly.

Prior to getting approval for your trademark registration, you may use the symbols “TM” (or “SM”) to put the world on notice of your common law trademark rights in that mark for the goods or services provided. Once your mark has received full registration from the USPTO, and not before, are you authorized to use the federal trademark registration symbol, the circle “R” (®). It is important that once you have your mark approved that you properly display the ® everywhere your mark appears.

Trademark Mistake #5: Failing to Monitor (and Protect) Your Trademark from Infringement.

Just because you have your mark registered, it doesn’t mean that others will abide and respect the laws protecting your mark. Often times, there is unintentional (and intentional) infringement against your mark. Whether the infringement is deliberate or not, it is important that you, as the trademark owner, protect your mark from any infringement. If you don’t, your mark may be in jeopardy of a cancellation proceeding by a competitor, subjecting your business to an incredible and unnecessary loss.

Trademark Mistake #6: Forgetting to Renew Your Trademark.

Trademark registrations are not a “one and done” process. Trademark registrations must be regularly affirmed and renewed.. For example, a new trademark owner must file an Affidavit of Use between the fifth and sixth year following the registration and another renewal filing within the year before the end of the ten-year period after the date of registration. A renewal application must also be filed within the year before the end of each successive ten-year period following the date of registration. If you forget any of the requirements as set by the USPTO for managing your trademarks, you may lose your trademark registration.

Trademark Mistake #7: Not Hiring a Qualified Trademark Attorney.

Last, but certainly not least, another mistake that people commonly make is not hiring a qualified trademark attorney to assist in the trademark application process, and to help protect, monitor and renew the mark. If your business is not in the business of applying for and monitoring trademarks, then you are subjecting yourself to potentially catastrophic losses. Why not leave it to licensed legal professionals that have experience and expertise in this area? Hire a trademark attorney to take care of your trademark needs so you can spend your time focusing on your core competencies within your business.

Knowing these some of the most common mistakes will, hopefully, help you avoid making them in the future. One final bonus trademark mistake that people make is simply not registering their marks in the first place. This can really cost you (and your business) a great deal of money. So, be sure to take the necessary steps to properly file, protect, maintain and renew your trademark registration. Contact WINTER LLP to service your trademark, copyright and corporate needs.

This post is brought to you the good folks at WINTER LLP, servicing the trademark, copyright and corporate needs of clients throughout Orange County, Los Angeles, San Francisco and Phoenix. Contact us at 1-855-FILE-TMS or through our website to file your trademark, copyright, corporation or LLC today.

To Trademark or not to Trademark – – That is the Question!

But First, Start with the Right Corporate Protection

These days, anyone can start their own business quickly and easily over the internet. There are, however, a few problems directly associated with the speed in which a company can be “created” online. The first is that many entrepreneurs don’t always spend the time (or money) necessary to properly ensure they’ve dotted the “i’s” and crossed the “t’s” with respect to the corporate structure of the company (Corporation or LLC or other). The second is that many don’t spend the time (or money) to protect their new brands and products.

Ensuring that you have the right corporate, trademark and/or copyright protection strategy in place is paramount to a new business’s success. Plus, it’s so easy and cost effective to do these things (even with an attorney) that you cannot afford not to do it. But, more often than not, entrepreneurs shrug these details off, and even more often than that, they pay the price later…often times tens of thousands more. This is especially painful when it costs much, much less than that to make sure you have it done right in the first place.

So for starters, talk to an attorney about creating the correct legal entity to protect your business. Many online companies allow you to “set up” a company in a matter of minutes. What many people fail to realize, however, is that simply filing Articles of Incorporation (Corporation) or Articles of Organization (LLC) doesn’t necessarily mean you are personally protected from liability if things go wrong. Much more needs to be done to ensure you are personally protected. And in our opinion, the disservice provided by many online corporate start-up companies to unknowing consumers is a travesty and can be catastrophic to individuals or small businesses. Talk to an attorney!

Once your corporate structure is in place, look at your products and services and consider the value in their brands. For a few hundred dollars, it’s likely a very good idea and wise investment to protect your brands by registering them as trademarks. Here are some tips to help you identify when you should or should not file for trademark protection.

You should file a trademark… if you want to protect your brand name and its value nationally or internationally.

You should not file a trademark… if you don’t care about whether or not your brand name is stolen, and potentially your reputation tarnished. Even if you don’t care about this, you should at least do the minimum to ensure your brand is not in violation of other trademarks. Hire an attorney for this. It will cost you a few hundred dollars and may save you tens of thousands in legal fees and damages later.

You should file a trademark… if you are already marketing your products with a unique brand. If you have a unique brand that you’d like to protect, immediately start using the “TM” (goods or services) or “SM” (company service mark) symbols. This will provide you with common law trademark protection. But you likely need more than this. Please note, however, that you cannot use the federal registered trademark circle “R” symbol “®”, which denotes a fully registered trademark by the United States Patent and Trademark Office. Using the ® without having a fully registered mark immediately subjects you to statutory damages.

You should not file a trademark… if you have no intention of monitoring your trademarks or properly defending them. You have to be vigilant in your efforts to defend your trademark. Not doing so and not properly filing paperwork to renew your trademark may cost you (and your business) ownership of your trademark! Not to mention all the goodwill you’ve established in your brand. This could literally cost you thousands if not millions of dollars in value.

You should file a trademark … if you take your business seriously, want to protect your hard-earned goodwill, and want to see your business thrive.

Despite all the information available online, trademark law is complicated. And while hiring a trademark attorney is not required in order to file for a trademark, it is highly recommended.

WINTER LLP® is a corporate, transactional, regulatory and intellectual property law firm focused on traditional and emerging markets, with offices in Orange County, San Francisco, and Arizona, servicing clients around the world.

Trademark Symbol ™ vs Registered Trademark ®

You’ve probably seen the trademark symbol before – – it’s that superscripted or subscripted “TM” (or “SM”) you see to the right of a brand name or logo. However, you’ve also probably seen the registered trademark symbol as well – – that’s the “R” enclosed in a circle (®). But do you know the difference?

The difference between the trademark symbol, ™, and the registered trademark symbol, ®, is simple. The trademark symbol, ™, is used to put the world on notice that a company or individual is claiming common law rights to use a product or service name, logo, slogan or packaging. However, the registered trademark symbol, ®, can only be used when a company or individual has received Federal trademark registration status with the United States Trademark & Patent Office (USPTO).

In order to use and enforce your trademark rights throughout the United States, you must first register your trademark with the United States Trademark & Patent Office (USPTO). Once you have received registration status from the USPTO, then and only then can you use the ® symbol. In fact, it’s illegal to use a ® without first registering your brand with the USPTO.

If you have a product or service, slogan, logo or other type of branding that you would like to have the legal rights to protect, you might want to add the trademark, ™ (or service mark) symbol now and then contact a trademark attorney to help you file for Federal trademark registration so that you can legally protect your trademark rights.

This post is brought to you the good folks at WINTER LLP, servicing the trademark and corporate needs of those throughout Orange County, Los Angeles and San Francisco. Contact us at (949) 999-2058 or through our website to file your trademark application today.

WINTER LLP® is a corporate, transactional, regulatory and intellectual property law firm focused on traditional and emerging markets, with offices in Orange County, San Francisco, and Arizona, servicing clients around the world.