Special databases may contain more than one similar trademark if you search for a specific trademark. The primary purpose of registering a trademark is to distinguish a product or service from all other goods and services, and to identify the source of a brand? In this situation, could a trademark help a consumer distinguish one brand owner from another? To answer these questions, trademark categories and Nice Classification come in handy.
What are trademark classes?
As part of the trade mark registration process, you have to specify which goods and/or services you intend to use your brand name for (one of the many fields you need to fill out is the category box). Trademark classes describe these categories. Nice Classification summarizes these categories. A Nice Classification is a list of these trademark classes administered by the World Intellectual Property Organization (WIPO), and it consists of 45 classes together, 34 of which are goods-related and 11 of which are services-related. Nice Classification also includes remarks about the classification criteria; titles of classes; a list of goods and services in alphabetical order; and some guidelines for each trademark class.
Generally, trademark classes apply in two situations:
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Determination of final cost for a trademark application.
Fees for trade mark applications are calculated according to the number of classes you select. Depending on how many classes your goods or services apply under, and how much protection you want under all of them, the application fee will be determined by the total number of classes. More classes, then a bigger amount of fees shall be paid for a trademark application. For example, you want to register a trademark in the US under the three most popular classes 9, 35, and 42 (we will describe each of them later). The initial application filing fee (Teas plus) costs $250 per class of goods/services. Since you want to trademark your brand name with three international classes, you have to pay for all of them, and the final cost for a trademark application will amount to $750.
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Avoidance of disputes with similar TMs.
You should not always choose a registered trademark that is identical to or similar to the trademark you chose. Application fees will be determined by the total number of classes in which the owner will receive intellectual property rights protection for the goods and services you apply under, as well as the amount of protection you wish for each class. Although a registered mark may be identical to the one you want to register, the trademark categories to which it is applied may be totally different (e.g., classes 9 and 32). By doing so, you can register a trademark that is similar to one already existing, but in a different class. There will be no cancellation of your application due to similarity, and all future trademark disputes will be on your side (especially in the case of ecommerce platforms and domain names). This prevents disputes between similar trademarks when the TM classes are not identical.
In general, how does classifying goods and services benefit the administration?
You can now do a trademark class search and see if identical or similar marks have already been registered in the industry you want to work in;
With a unique classification system, applicants need not reclassify their trademarks when entering other jurisdictions (though their descriptions of goods and services may still need to be corrected);
Due to the additional fee for each additional class, a monopoly position is prevented when one trademark captures a large market share.
Online businesses nowadays tend to use what trademark classes?
Class 9.
It includes items such as mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment, computers, computer software, and fire extinguishers. It is in demand because it is used for trademarking software. Under this trademark class, only hard goods received from the supplier should be registered. These goods include, for example, mobile applications.
Class 35.
Services include advertising, business management, business administration, and office functions. The services listed above probably require registration under this class. Usually, this category is used for brand names for e-commerce platforms. Amazon, Shopify, and AliExpress are examples of services that fall under class 35. When your business is similar to these ones (e.g., a marketplace), consider this class as a primary one. Another article discusses trademarks for ecommerce.
Class 42.
It covers scientific and technological services and research and design relating to them, industrial analysis and research services, computer hardware and software design, graphic design (try this BA in media design as a reference), etc. You may notice that, like class 9, this trademark category also applies to software. However, this is not a class 9 because it only applies to non-downloadable software programs. This includes consultancy, but not the development of a program available for download from the Play Market. You should therefore be very careful when choosing the trademark class for your programming business. A trademark can be registered under classes 9 and 42 if your project is both App (downloadable) and SaaS (non-downloadable). Having your business registered under two classes is crucial because if you register under just one class, and then later develop an application to receive trademark protection under another, your application will likely be rejected.
Generally, Nice Classification is used in trademark classification, though some jurisdictions may divide classes into subclasses. This is done, for instance, in China. As a result, you should choose not only an international class under Nice, but also a unique Chinese subclass when registering a trademark in China. The situation is truly unique in the world. The fact remains, however, that this happens. The registration in one subclass may not prevent the registration in a different subclass by another applicant.
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How to choose a trademark class?