When You're Applying for a Trademark Is it Better to Apply in a Lot of Categories or Just a Few?

By Shelly Morgan

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.

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.

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Trademark Classifications

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.

Trademark Examination

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.

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How to Select a Trademark Class

References

Related articles

How To Trademark Something

A trademark is a mark, symbol or combination of words that distinctively identifies a product or service -- McDonald's Golden Arches, for example. Trademarks have economic value because they represent the business reputation of the products they represent or the company with which they are identified. Registration of your trademark with the U.S. Patent and Trademark Office allows you to obtain nationwide protection, sue in federal courts and qualify for international protection.

Does a Trademark Prevent Naming Something?

You’re surrounded by trademarks every day. For example, the names Pepsi, Coke, RC Cola, Merry Maids all define specific goods or services. These trademarks help eliminate potential confusion among consumers when they are confronted with similar goods. If your trademark is registered with the United States Patent and Trademark Office, you may be able to exclude others throughout the country from using your trademark to identify similar good or services.

How to Trademark a Product Before It Exists

The only way to establish trademark rights is to actually use the trademark in commerce. If your product is not ready for the marketplace, you do not have any trademark rights related to the product. However, if you are within 18 months of marketing your product, you can file an "intent-to-use application" with the U.S. Patent and Trademark Office to establish yourself as the first to use the trademark.

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