Comparing Apples To Apples Isn’t As Simple As It Sounds When It Comes To Trademarking

Posted October 23, 2017 by
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BSYVantagePoint_TrademarkClasses_LWR_ImageWhy is it that you can drink a Dixie Beer out of a Dixie cup while listening to the Dixie Chicks? Or pick up some Dove chocolate in one aisle of the grocery store and Dove body wash in another? The answer to these identical brands co-existing is quite simple: Trademark classes. However, the comprehension of these isn’t as simple as you may think.

There are 45 different international trademark classes – 34 classes for the identification of goods and 11 for services – covering everything from manure to musical instruments. The trademark class system was first established by the Nice Agreement in 1957 and is recognized globally by WIPO as the universal standard of the classification of goods and services for the purpose of trademark registration. These are international trademark classes defined by – not outlined by, or specific to the USPTO.

Trademark classes are unavoidable. All trademark applications – regardless of the country of filing – must include the designation of at least one trademark class. Identifying the correct trademark class is a critical component of the registration process, and could be the deciding factor whether or not your trademark is granted registration status.

The difficult part about understanding the international trademark classification system, is that the 45 identified trademark classes are not mutually exclusive, meaning one Brand (i.e., Disney) will need to be trademarked in several classes (i.e., Class 41: Education and Entertainment, Class 28: Toys and Sporting Goods, Class 25: Clothing and Apparel) depending on the goods and services the trademark – name or logo – will be used to identify.

You might know that Class 9 contains goods relating to computers, but would you know that your new software name may need to be trademarked in 2 classes: Class 9 for downloadable software, and Class 42 for non-downloadable software? And if your software is used in conjunction with a medical device for diagnostic purposes, your registration would extend to Class 10 for medical devices and possibly Class 44 for medical services.

To add yet another complexity to the international trademark classification system, some classes are so broad that identical trademarks can legally co-exist in the same trademark class for non-competing goods or services. For example, Class 9 covers the following unrelated goods:  bullet proof vests, baby monitors, and even cash registers. With the intention of a trademark to make it easier for consumers to identify the source of one good or service from another, the governing trademark body will approve or deny a trademark application based on the perceived level of consumer confusion if both trademarks were to co-exist … even when applications are filed within the same trademark class for similar or identical trademarks.

Developing a new Brand name that perfectly and strategically fits a Company, product, or service is tough, but the truly complex part is developing a name that strategically aligns with the intended trademark class and can be owned and protected.

This is where trademark specialists are invaluable members to any Brand creation team. When it comes to establishing the correct trademark classes to both search and register a potential Brand name in, a trademark law specialist is vital to the process. It takes an expert in the field to effectively navigate the gray space between and within each international classification. Engaging trademark attorneys and specialists in the creative process will increase the likelihood that the final Brand name selected will be available for both use and registration in all the appropriate trademark classes.

Tags:

Brand | Branding | Trademark

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