The following is a transcript of an episode of the Tricks of the Trade(mark) podcast, listen to the episode here.
Every trademark application and registration at the USPTO contains one or more international classes. What I mean by this is that every application and registration has to use the international classification system of goods and services that the USPTO follows. The USPTO follows it because many other countries also follow the same classification system, and by international treaty it makes some of the opportunities for foreign registrations and international filings a lot easier and smoother. These 45 different classifications include 34 for products or goods, and 11 for services. So for example, jewelry is in Class 14, generally. Clothing is generally in Class 25. Communication services are generally in Class 38, and educational and entertainment services are generally in Class 41.
Now I used the caveat of the word “generally” because the classification and description of goods and services is, in many ways, more of an art than a science. And it’s possible that the same thing could be described in multiple different ways, and that in doing so it could fit into multiple classifications or categories.
So for example, music. If you just say I’m in the music business, that could be recorded music, that would generally be in Class 9, or streaming music, that would generally be with communication services in Class 38, or live musical performances by an artist or a band, that would generally be in entertainment services in Class 41. So many products or services can actually spread across multiple classes. And in going through the application process to register a mark at the USPTO, applicants will often have to make choices as to which descriptions and which classifications they want to use.
I’m here to tell you that they often overthink that decision. The key is to cover the core of what your product or service is, and not worry about covering every single class possible, or all the different descriptions that might apply in some manner. If you had an unlimited budget, sure, filing in five or six or seven or ten classes might make sense. But assuming, like most businesses, there is a limited budget for legal, and a limited budget for intellectual property protection, I generally think that covering a core class or two is appropriate in most cases, because the searches that others and USPTO examiners will do online aren’t limited to just one class most of the time.
Sometimes a search will be directed or concentrate in one class, but the keywords in describing a product or service are also an important part of doing a proper and thorough search. And so whether your music was in Class 9 or 38 or 41, if someone else applied for a music product or service with a very similar name, it should come up as a conflict, regardless of what class the mark is in. And even if someone else with a similar name for music got through the application process and got approved, you, in this hypothetical, the owner of the first mark, could most likely could block or communicate with the owner of the later filed mark, because of the similarity and relatedness of the goods and services, regardless of what class the registration is in.
Like many, if not most, things with trademark protection and trademark registration, there’s a lot of nuance. This is why working with someone with a lot of experience is very, very valuable.
Note that this system of classification also goes back to days before there were online searches. At that time, being in multiple classes was much more important, because attorneys and others searching would actually search file cabinets and drawers full of index cards with records on them, and the records would be sorted by the various classes. So if you were trying to clear a mark in Class 41, you would search the drawers for Class 41, and you may not at that time have easily expanded the scope of the search to also physically take the time to search for Class 9 or Class 38 or other classes that could have some sort of musical relevance. Of course, that manual system was obliterated years ago. And now because of online searches is why I’m telling you that describing the core is more important than focusing on the particular class numbers, or the number of classes.