Trademark Classes Defined by Law
People or businesses that are seeking to register a trademark will need to file the trademark application in the appropriate class. The U.S. Patent and Trademark Office provides 45 classes of trademarks, consisting of 34 classes for products and 11 classes for services. The classification system helps the USPTO administer the vast range of trademarks under its authority. Some similar logos or phrases might be properly registered as different trademarks in different classes. This means that they likely can coexist separately without competing, since consumers would not be confused.
Choosing the appropriate class for your trademark is critical because you will not get protection if you choose the wrong class, and the USPTO will not refund the application fee. To use an obvious example, if you try to register a medical device in the category of Food and Drink, the USPTO will cancel your application. In many situations, though, the distinctions between classes are more subtle. You will need to carefully review the description of each class. If your trademark does not quite fit the description for a certain class, you may want to explore coordinated classes for that class. For each class, the USPTO provides a list of coordinated classes that relate especially closely to the products or services in that class.
Conflicting Marks Within a Class
The USPTO may be reluctant to approve a trademark application if a trademark already exists in the same class that is very similar to the mark in the application, and the products or services associated with each trademark also are very similar. This means that both entities would be marketing comparable products or services to the same audience of consumers. Since this could cause legal conflicts in the future, the USPTO often will prevent these issues by denying protection to the newer mark.
However, being in the same trademark class does not automatically mean that similar marks associated with similar products or services conflict with each other. If the trademark owners promote their products or services in different ways, a conflict may not arise. Conversely, registering a trademark in a different class from a very similar mark does not automatically mean that no consumer confusion or conflict will arise.
Choosing the Appropriate Class
Sometimes classes will appear to overlap. Products or services may consist of several different components, each of which may tend to fall in a different class. A trademark owner should determine which class definition most closely fits their overall product or service.
If you are breaking new ground in your industry, such that your product or service is novel, you may want to file trademark applications in several different classes. Many owners of internet-based businesses face this dilemma because the trademark classes are designed for more traditional types of businesses. Or if your business combines products with services, you may want to apply for registration in a trademark class for products and a trademark class for services. Predicting how the USPTO will view your business model can be challenging.
