Every trademark application must select at least one International Class for the proposed trademark being filed. The International Classification of Goods and Services, commonly referred to as the Nice Classification, is a system used by many countries to categorize the goods or services being registered. Simply put, it is how the applicant will identify its goods or services being offered in connection with the trademark.
There are currently 45 International Classes. Classes 1 to 34 are used for goods, such as everyday products, being offered; and classes 35 to 45 are used for services, such as legal or accounting services being offered. For example, the trademark for the car maker FORD is in Class 12 because that Class “includes mainly vehicles and apparatus for the transport of people or goods by land, air or water.” See TMEP, Section 1401. A trademark may fall into more than one international class, in which case there is an additional filing fee for each class.
An applicant must carefully select the International Class associated with the trademark for two reasons: (1) selecting the wrong Class may cause the USPTO to reject the application; and (2) trademark protection will only be afforded for classes in which the trademark is registered in. By selecting the wrong Class, the applicant may not be able to enforce its trademark against a competitor – thus defeating the purpose of filing for a trademark.
The following are some tips to assist in selecting the right international class:
First, review the Nice Classification system and become acquainted with all the different categories of goods or services. A complete list of these classes and their descriptions can be found on the World Intellectual Property Organization (WIPO) website. Full familiarity with all the classes is key in making sure the correct class is selected.
Second, determine what goods or services your business is offering or is planning to offer if you are filing an intent-to-use application. The best way to do this is to make a specific list of all the goods or services being offered and then group them together. The more specific the list is, the better it is since it will make it easier to determine the appropriate class.
Third, begin to identify the relevant class (or classes) which your goods or services fall into by comparing your list to the descriptions of the classes listed in the International Classes. Select the class that best describes the core or main goods or services you offer. You may select more than one class if you feel it is necessary to fully protect your trademark.
Selecting the correct International Class is complex and can be tricky because it requires a thorough review of the applicant’s goods or services being offered. This analysis may show that the proposed trademark is being used in more than one International Class, in which case it is imperative to file accordingly.
If you need help with selecting an international class for your trademark, please give us a call for a free consultation.
