PICK AND CHOOSE: NOT EVERYTHING UNDER THE SUN CAN BE TRADEMARKED

Posted by Kaustubh Nadkarni on August 29, 2016

While most business and individuals understand the value of trademark protection, there are many who assume that trademark protection is automatically universal. Instinctively, many believe that trademark protection of their catchy slogan or one of a kind logo extends across all goods and services. So for instance, if a business owner is seeking protection for a trademark related to the service of selling coffee, for example, does that protection also extend to other goods like clothing or tools?

Not exactly, and I am going to tell you precisely as to why trademark protection is not guaranteed universally for all goods or services.

TRADEMARK GENERALLY

A trademark is typically a word, phrase, symbol, or design (logo), or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. Most notably, acquiring trademark protection serves in the best interests of small and large businesses as well as consumers. Additionally, trademark protection helps strengthen the economy by promoting the industrial and technological progress of the nation.

TRADEMARK PROTECTION IN THE UNITED STATES

In the United States, for instance, one can obtain federal trademark protection for their word, phrase, symbol, or design (logo) by filing a trademark application with the United States Patent and Trademark Office (USPTO). Specifically, the USPTO is an agency of the United States Department of Commerce. Among its many significant roles within the realm of Intellectual Property, one of them includes enabling business and individuals federally register their trademarks and service marks for products and services, respectively.

In order to obtain federally register a trademark or service mark with the USPTO, the Applicant must pick and choose the most accurate international class of goods and services (“IC”). The International Trademark Classification System dictates which classes your trademark or service mark application will be filed under.

THE INTERNATIONAL OR NICE CLASSIFICATION SYSTEM

The IC Classification System or the “Nice Classification” (colloquially referred to as sometimes based on where the treaty was consummated in Nice, France in 1957), concerns the IC for the purposes of registration of marks open to states or nations who are contracting parties to the Paris Convention, a treaty for the protection of Industrial Prosperity.

Currently, there are approximately eighty four (84) States and adding that are contracting parties to the Nice Agreement, Additionally, the trademark offices of about sixty five (65) additional states, as well as the International Bureau of WIPO, the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), the Benelux Organization for Intellectual Property (BOIP) and the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) of the European Union (EU), also use the Classification System when it relates to registration of trademarks.

ADVANTAGES

The uniformity of the IC Classification System as a single reference system allows the goods and services for any given trademark to be classified under the same class in all nations who have adopted the system. This Is advantageous to many businesses and individuals heavily involved in international trade by understanding the protection of their trademark on a uniform platform.

GOODS AND SERVICES

Currently, there are forty-five (45) international classes for goods and services. Thirty-four (34) are for goods and eleven (11) are for services. The Classification system list is amended and supplemented periodically by a Committee of Experts in which all Contracting States are represented. The current edition of the Classification is the tenth, which entered into force on January 1, 2012.

The following are details on the international trademark classification system:

GOODS

Class 1-Chemicals
Class 2-Paints
Class 3-Cosmetics and cleaning preparations
Class 4-Lubricants and fuels
Class 5-Pharmaceuticals
Class 6-Metal goods
Class 7-Machinery
Class 8-Hand tools
Class 9-Electrical and scientific apparatus
Class 10-Medical apparatus
Class 11-Environmental control apparatus
Class 12-Vehicles
Class 13-Firearms
Class 14-Jewelry
Class 15-Musical instruments
Class 16-Paper goods and printed matter
Class 17-Rubber goods
Class 18-Leather goods
Class 19-Nonmetallic building materials
Class 20-Furniture and articles not otherwise classified
Class 21-Housewares and glass
Class 22-Cordage and fibers
Class 23-Yarns and threads
Class 24-Fabrics
Class 25-Clothing
Class 26-Fancy goods
Class 27-Floor coverings
Class 28-Toys and sporting goods
Class 29-Meats and processed foods
Class 30-Staple foods
Class 31-Natural agricultural products
Class 32-Light beverages
Class 33-Wine and spirits
Class 34-Smokers' articles

SERVICES

Class 35-Advertising and business
Class 36-Insurance and financial
Class 37-Building construction and repair
Class 38-Telecommunications
Class 39-Transportation and storage
Class 40-Treatment of materials
Class 41-Education and entertainment
Class 42-Computer, scientific & legal
Class 43-Hotels and restaurants
Class 44-Medical, beauty & agricultural
Class 45-Personal

THE SIGNIFICANCE OF SELECTING THE RIGHT INTERNATIONAL CLASS OF GOODS AND SERVICES IN THE UNITED STATES

Many business owners have the misunderstanding that having a mark or slogan automatically affords them universal protection across all goods and services. That misinterpretation of trademark protection is further from the truth. The reality is that the Applicant can only register a trademark for goods or services that the Applicant either: 1. Using currently in commerce, and/or 2. Intents to use in the near future. It is that simple.

That being said, the Applicant must select the appropriate IC while registering their trademarks. The determination of IC for each trademark is directly related to the description of Applicant’s goods and services. Proper selection of IC also saves the Applicant time and money, arguably two of the most critical components for any businesses and individuals.

Furthermore, it is important to note that seeking registration under an incorrect IC can lead to cancellation of the trademark application with a non-refund of USPTO fees. The USPTO has fees per every class the Applicant, which can add up quickly. Selecting the incorrect IC can also lead to legal issues down the road, wherein any third party can seek to oppose cancel your registered application or registered trademark respectively, based on the fact that the trademark was incorrectly registered and the goods or services intended under the trademark are or were never sold in commerce.

CONCLUSION

Protection of trademark is extremely important as a source identifier for businesses or individuals. Arguably, it can be one of the most important assets for your business. Statistics indicate that venture capitalists and other investors are willing to allocate 80% higher funds to businesses, who are protected by intellectual property, including trademarks.

However, having a trademark an individual or business seeks to protect does not extend automatically across all goods and services. It only extends to those particular goods and services that are strictly sold by the business in commerce, if it is granted.

Moreover, because goods or services within the same IC are typically considered to be related or competing in commerce, the use of the similar marks within the same IC has a high potential for customer confusion. Therefore, it is important to understand that even if two products or services are within the same IC, it does not irrefutably ascertain whether the two conflicting marks would be confusingly similar.

As such, the Applicant must be very careful and seek legal help in selecting the appropriate IC when seeking trademark registration. As an experienced intellectual property attorney, I can help individuals or businesses navigate through the arduous waters of the registration process in the United States and worldwide, including the precise selection of IC based on your customized description of goods and services.

Topics: #ClassificationSystem, #IC, Intellectual Property Law, #IntellectualProperty, Trademarks, #USPTO