In this ‘Intellectual Property Application Series,’ I’ll be discussing trademark classes. I’ll explain what a trademark is, what to know about trademark classes before filing, and why a trademark is an important tool for protecting your product or service.
What a Trademark is:
A trademark is a type of intellectual property that distinguishes and identifies the source of a good and/or service. Trademarks also assert one’s right to use a specific word, phrase, logo/symbol, design or a combination thereof in the market. In short, company’s use trademarks to distinguish one’s products/services from another.
The word “trademark” is generally used as an umbrella term to include both trademarks and service marks. More specifically, trademarks protect those marks that indicate the source of a good, rather than the source of a service. The protections provided under either a service or trademark vary slightly. This is because they are specific to the classes of goods/services they protect.
What to Know About Trademark Classes Before Filing:
One of the first steps to registering a trademark is to investigate the mark and confirm if it is unique. To know if a potential trademark is unique, the potential mark’s words/phrasing and the connection to their use, must first be identified. This identification must be done in accordance with the rules of the filing office in which registration is sought. To assist in identifying a trademark’s use, these offices provide a list of classes and their descriptions to categorize them. The classes are identified by a class number and include specific descriptions of the types of goods/services covered under their protection.
Trademark classes identify a trademark or service mark’s use in commerce. More specifically, the use of a trademark identifies it and a trademark’s class(es) identifies its use. Each class is simply a broad description of how the use of a mark is intended. A literal description of the mark and its use(s) are also required and must be more limited than the class identification.
Potential trademark uses are categorized into classes with specific descriptions of the type of goods/services the classes include.
The USPTO has 45 different class identifications; 34 class options for products and 11 class options for services. These include:
001 – Chemicals
002 – Paints
003 – Cleaning Substances
004 – Industrial Oils
005 – Pharmaceuticals
006 – Common Metals
007 – Machines
008 – Hand Tools
009 – Computers and Scientific Devices
010 – Medical Supplies
011 – Appliances
012 – Vehicles
013 – Firearms
014 – Precious Metals
015 – Musical Instruments
016 – Paper Goods
017 – Rubber Products
018 – Leather Goods
019 – Building Materials
020 – Furniture
021 – Household Utensils
022 – Ropes and Textile Products
023 – Yarns and Threads
024 – Textiles
025 – Clothing
026 – Lace and Embroidery
027 – Carpets
028 – Games and Sporting Goods
029 – Meat, Fish, Poultry
030 – Coffee, Flour, Rice
031 – Grains, Agriculture
032 – Beers and Beverages
033 – Alcoholic Beverages
034 – Tobacco Products
035 – Advertising and Business Services
036 – Insurance and Finance Services
037 – Construction and Repair Services
038 – Telecommunications Services
039 – Shipping and Travel Services
040 – Material Treatment Services
041 – Education and Entertainment Services
042 – Science and Technology Services
043 – Food Services
044 – Medical and Vet Services
045 – Legal and Security Services
Each of the above classes has a description to assist with determining if a trademark fits in that category. With so many options, it can be tricky to properly describe and identify a potential trademark’s classes. An experienced attorney can assist a trademark applicant is choosing the best way to select and identify a trademark’s goods and/or services.
Once a trademark’s classes are identified, this information is used to compare the potential trademark’s use and potential classes to existing marks for their similarities in specific phrasing and use. For this, a person performs a search of currently used marks and their classes. An individual can attempt a search, but a patent attorney, patent agent, or a person who specializes solely in these types of searches can conduct a formal search. The United States Patent and Trademark Office (USPTO) even has some advice about hiring a private trademark attorney.
To conduct a formal search of a trademark and its potential classes, an experienced professional uses specialized tools and databases to compare the potential trademark and classes to the millions of published and registered applications and their classes. You can find these applications in the database of the Trademark Electronic Search System (TESS) of the USPTO and in the state specific Secretary of State Office databases.
A thorough search would also include a search of common law marks. Common law marks are not, as a matter of course, categorized into classes, because they are not registered marks. To compare a potential mark to any existing mark, its use and classes must first be firmly identified.
Helpful Paralegal’s Note: If an owner of a Common law mark believes that another mark infringes upon their own mark, an application for federal registration with the USPTO should be filed before an infringement suit filed. This is because registered trademark holders have the right to recover profits, sue for statutory damages, cover legal costs, and receive triple damages for willful infringement.
Even if a trademark is currently in use by another business, registration of a new potential trademark may still be possible. This is a possibility if the potential trademark is under different classes, for marketing different products or services than the prior registered trademark. One company’s use of a word or phrase in a trademark may be classified under one set of goods/services, while another company can use the same words/phrases to market an entirely different set of class of goods/services.
Trademark Requirements and Use:
The first step is to decide on a mark and its associated classes. The next step is to ensure the actual trademark application and associated classes meet specific government filing requirements. Submitting an application without a clear understanding of the rules and requirements could lead to an application not being accepted, or worse, not being properly protected under Federal Regulations. The trademark application filing requirements are defined by the USPTO.
To qualify for federal protection via registration with the USPTO, a potential registered mark must be unique to the individual business that is applying for its use. A trademark’s indification as unique is judged based on its words/phrasing and their connection to its classes of use. The mark must also either be currently used in commerce or intended to be used.
Whether or not a mark is used in commerce dictates what type of application can be filed with the USPTO. A statement of use (SOU) application is filed with specimen(s) that show how the mark is currently being used in connection with its designated classes. If the mark has not been used in commerce, an intent to use (ITU) application can be filed. An intent to use filing secures the filing date. It also creates a public record of the mark in connection with its intended classes .
With either a use based or intent to use application, the USPTO will publish the mark. Publication begins a thirty-day Opposition Period. During this time, a third party may contest registration of the mark. To contest registration, an attorney would file an opposition to the mark with the Trademark Trial and Appeal Board (TTAB).
If no objection to the mark is filed by a third party (within the thirty day deadline), a Registration Certificate may be issued for a use-based mark, while a Notice of Allowance may be issued for an intent to use mark. An ITU application must be used in connection with its designated classes and a specimen showing its use must be filed with the USPTO, within 6-months of receiving the Notice of Allowance. This deadline is extendable up to three years, with the appropriate fee. If a specimen showing use can not be supplied by the final deadline, the application will expire and rights may be lost.
What to Know About the Trademark Prosecution Process:
Prosecution, i.e. examination/review of a trademark application begins within a month of filing the application with the USPTO. During the prosecution phase, the trademark Examiner will review the mark for adherence to the USPTO filing regulations. To see if the mark is distinctive, the Examiner will compare the mark and its potential classes to the other marks and their identified classes both published and registered on the USPTO database.
The mark must be distinctive and any specimen must show the mark being used in commerce in association with the classes. It is important to choose potential classes wisely. It is possible to remove classes from an application, but you can not add them after filing. An entirely new trademark application, assigned a separate application number, would be required to register additional classes associated with a mark.
In some instances, an intent-to-use mark is filed identifying multiple classes, but not all classes are in use by the initial Notice of Allowance deadline. One option for addressing this, is to divide the trademark application. After dividing the application, a specimen showing the currently used class(es) would be filed in response to the Notice of Allowance and a Registration Certificate may be issued for those specific classes proven to be in use.
As for the classes that are not yet in use, the Notice of Allowance gives two options. An applicant is given 6-months to file either a Statement of Use, with a Specimen proving its use, or file an official Request for Extension of Time, with a fee. If accepted, the Request for Extension of Time would extend the deadline another 6-months. In all, an applicant can file a Request for Extension of Time six times. This means an applicant has the opportunity to file three years worth of Requests to extend the deadline to file a statement of use and receive a registration certificate.
What to Know About Maintaining a Trademark Registration:
A trademark owner should be wary of solicitations from private companies requesting payments to maintain a trademark. Some of these companies simply want to charge for attending to the trademark maintenance fee. Unlike a licensed attorney, these companies are under no obligation to continue to monitor a trademark after the initial renewal fee is paid. It should also be noted that there are intentionally misleading or malicious entities that send solicitation letters to trademark owners. These entities request payment without the intent of actually maintaining a trademark. In this case, if renewal fees are not paid, the rights to a trademark will be lost, while the trademark owner believes their rights are still protected. To help identify trademark solicitors, the USPTO has included a list of potentially misleading notices.
A registered trademark must be renewed to keep it enforced. This rule prevents potential trademarks from being excluded from registration without a mark actually being in current use. To maintain a U.S. trademark registration, you must continue to use the mark in connection with the specific classes of goods/services identified in the registration, and occasionally file certain documents in the USPTO. The time frame for this renewal is five years after registration, then between every nine to ten years thereafter.
Between five and six years after registration, a Declaration of Continued Use (or Excusable Non-Use) must be filed showing the mark used in connection with its identified classes. This is also called an Affidavit of Continuing Use, or a Section 8 Affidavit, since its requirements appear in section 8 of the Trademark Act codified at 15 U.S.C. § 1058. The affidavit also requires a specimen showing a marks use in commerce, in connection to its classes, and a fee for each class of goods. By every tenth anniversary thereafter, a Declaration of Continued Use and an Application for Renewal must be filed. The Application for Renewal, governed by section 9 of the Trademark Act (15 U.S.C. § 1059) also requires a fee for each class of goods/services covered by the registration.
After a trademark is in use and/or registered, the market must be monitored for infringement. The trademark owner is expected to enforce their ownership or risk losing rights to the mark. If infringement is suspected, a notice of the trademark rights should be sent to the infringer with the request to cease and desist. This cease and desist notice should, at a minimum, advise the infringer to stop the infringement, or expect further action. While it is not required, having an experienced legal team behind a cease and desist notice can help avoid the potential for the tables to turn. A simple cease and desist notice can be justification for a defamation complaint, claim of extortion, or even material for a counter suit.
The trademark owner is responsible for monitoring and enforcing their rights, but third parties can be enlisted to assist. To ensure that a mark is being monitored correctly, we can assist in forming these trusted relationships and maintaining communication. Additionally, if infringement is found, our team is here to help guide you through the task of trademark enforcement.
Why a Trademark is an Important Tool:
Trademarks are important in their ability to protect both consumers and the businesses that serve them. They provide businesses with a way to protect their identity and the goodwill associated with their goods/services. The rules that govern trademarks also help businesses compete fairly. To protect from monopolization, a trademark cannot be issued for generic terms that are used across an industry.
Trademark laws also help protect consumers from deceit by counterfeit products or fraudulent companies. Trademarks do this by signifying the goodwill and identity of a company. The goodwill of a company indicates to a consumer a level of quality or trust. If a business can’t protect that reputation, it could be the consumer that pays the greater price.
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. Thrive IP(R) patent attorneys are located in Charleston, SC; Greenville, SC; Knoxville, TN; and Alexandria, VA. Please contact us if you have an interest in filing a trademark application or discussing other intellectual property matters.