Trademark Fundamentals: Selecting Goods and Services for New Applications
As a startup founder, you’re often faced with numerous decisions that impact the future of your business. One such decision is how to approach trademark applications. A crucial component of this process is selecting the appropriate goods and services classes for which you will register your trademark. This choice not only affects the scope of your trademark protection but also influences the cost, as the U.S. Patent and Trademark Office (USPTO) charges a filing fee for each class of goods or services included in your application. Let’s explore how you can strategically select these classes to best protect your brand.
Understanding Trademark Classes
The USPTO categorizes every good or service you can imagine into 45 classes (34 for goods and 11 for services). Each class represents a broad category under which your product or service may fall. For example, clothing is a Class 25 good and running a restaurant is a Class 43 service.
Why Class Selection Matters
Selecting the right class or classes is crucial because (with some exceptions) your trademark protection only extends to the classes listed in your registration. If you register a trademark in Class 9 for software, but later start selling apparel under the same brand name without registering for Class 25 (Clothing), you will have limited rights for the Class 25 apparel in the geographic areas where you sell those products, but the stronger rights you get for your software from the federal trademark registration will not extend to the clothing products.
Tips for Selecting Classes
Filing Strategy
Filing a trademark application involves not just selecting the right classes but also preparing a precise and effective description of your goods or services within those classes. The language used can significantly impact the scope of your trademark protection.
When adopting a new trademark, we always recommend doing a clearance search to confirm that there are no third-party trademarks that are likely to block your registration or lead to a trademark dispute. Determining the goods and services that are important to your brand will help you focus on those third-party uses that are truly concerning, and it may help you find ways to apply for your trademark that will minimize the risk of a conflict.
Takeaway
Selecting classes for a trademark application is not just an administrative decision; it’s a strategic one that affects your brand’s legal protection and financial commitment. As always, consulting with a trademark attorney can provide you with tailored advice and ensure that your trademark application is both cost-effective and strategically aligned with your business goals.
Understanding Trademark Classes
The USPTO categorizes every good or service you can imagine into 45 classes (34 for goods and 11 for services). Each class represents a broad category under which your product or service may fall. For example, clothing is a Class 25 good and running a restaurant is a Class 43 service.
Why Class Selection Matters
Selecting the right class or classes is crucial because (with some exceptions) your trademark protection only extends to the classes listed in your registration. If you register a trademark in Class 9 for software, but later start selling apparel under the same brand name without registering for Class 25 (Clothing), you will have limited rights for the Class 25 apparel in the geographic areas where you sell those products, but the stronger rights you get for your software from the federal trademark registration will not extend to the clothing products.
Tips for Selecting Classes
- Identify Your Core Offerings
Start by listing out the products or services you currently offer or plan to offer in the near future. Identify the class that best describes each offering. Focus on your core business areas to ensure broad and relevant coverage without unnecessary overlap. - Consider Business Growth Plans
Think about how you intend to expand. If you foresee your brand moving into other categories, it is wise to consider applying for classes covering future goods or services. However, be strategic — including too many classes without a clear rationale can lead to needless administrative costs and complications. - Check Competitor Trademarks
Research trademarks in your industry to see how competitors have classified similar products or services. This can give you insight into industry norms and help you make informed decisions about class selection. - Understand the Costs
Be aware that the USPTO charges a filing fee for each class of goods or services included in your application. These fees arise not only when you apply to register the trademark, but also later, when you renew the registration or submit other types of filings. The fees can add up, especially for a start-up managing a tight budget. Prioritize the classes that are most critical for your brand’s protection to balance cost and coverage.
Filing Strategy
Filing a trademark application involves not just selecting the right classes but also preparing a precise and effective description of your goods or services within those classes. The language used can significantly impact the scope of your trademark protection.
When adopting a new trademark, we always recommend doing a clearance search to confirm that there are no third-party trademarks that are likely to block your registration or lead to a trademark dispute. Determining the goods and services that are important to your brand will help you focus on those third-party uses that are truly concerning, and it may help you find ways to apply for your trademark that will minimize the risk of a conflict.
Takeaway
Selecting classes for a trademark application is not just an administrative decision; it’s a strategic one that affects your brand’s legal protection and financial commitment. As always, consulting with a trademark attorney can provide you with tailored advice and ensure that your trademark application is both cost-effective and strategically aligned with your business goals.