Trademark applicants face a classic conundrum: Do you aim for a broad trademark by applying in many categories or should you be more frugal and risk limiting how you can use your trademark in the future? Knowing why categories exist and why selecting the right categories is so important can help resolve some of this tension and help you chart a path forward as you complete your trademark application.
Purpose of Trademarks
Your trademark application asks you to identify the precise goods and services on which your trademark will be used. The purpose of this question goes to the heart of trademark law, which is to prevent confusion in the market place. For example, you might have certain associations with the quality of a certain brand of tools. The brand's trademark helps you distinguish these tools from others that are on store shelves. Limiting a trademark to particular categories -- better known as classes -- helps prevent confusion.
There are approximately 1,000 possible classes that cover everything from abacuses to woven belts. Each entry is associated with a class number. The trademark application requires you to specify one or more class numbers. Failure to list the goods or services correctly could prevent you from registering your mark. Applying for many classes can get expensive, especially if you might not be using your trademark with each class. However, if you fail to include a class, you run the risk of someone else registering your trademark for that particular use in the future.
Before approving your trademark, the trademark examiner searches to see if similar trademarks are used in each class to which you apply. He can reject an application if it is likely to create confusion in the marketplace. If no one else is using your trademark -- or anything similar to it -- he will send you a notice of allowance.
Statement of Use
The law requires you to list the classes if you are using the trademark or if you intend to use the trademark. If you indicate that you intend to use the trademark in the future with a particular class of goods, you will have to file a statement of use within six months of receiving a notice of allowance. The SOU must include a sworn statement that you own the mark and are actually using it in commerce. This requirement might limit the number of classes for which you apply because you must eventually actually use the trademark on those types of goods. The failure to file the SOU results in abandonment of the trademark.