In order for a brand to obtain a trademark, it must meet 2 basic criteria. It must be unique in relation to pre-existing trademarks and must clearly distinguish your goods and services from those registered by others. Whether a trademark will be registered depends to a large extent on the choice of categories for which the trademark will be used.
Therefore, the correct classification of goods and services within a standardized classification system is extremely important when applying for trademark registration. What exactly is it about?
Intellectual property offices around the world use a trademark classification system that combines similar products or services into 45 different classes. Goods are listed in Classes 1 to 34 and services are listed in Classes 35 to 45. All classes have a general heading which gives an indicative explanation of what is in a given class.
detailed categories of one of the trademark classes
This is a general statement that you can use in the application, but it does not include all goods or services in a given class. In total, more than 9,200 options are categorized today, you can find a list of them with explanations and names here.
This system is often referred to as the international (Nice) classification of goods and services. Each class contains a list of pre-approved terms. If you use one of them, you can be sure that the office will accept such an application without further delay. Of course, the use of one's own terms is not prohibited, as there are always some goods or services that are not yet found in the international classification. However, for your own terms, you need to pay more attention to the correct classification and take into account that the office may additionally ask you to modify or clarify the term. If you do not know the class of your goods or services, you can use the TMclass search tool to help you find and classify your goods and services, or you can contact us and our experts for advice.
Especially when registering a trademark in the USA, the correct specification of goods and services is more difficult. This is because they use a slightly different sorting system in the US. Although it is also based on 45 classes, the requirements for clarity and accuracy of terms are much stricter than elsewhere. At the end of the day, however, it is positive, as it reduces the uncertainty and risk of conflict of similar brands. The disadvantage is that filling the application is much more difficult compared to the European trademark.
Choosing the right classes
In practice, it is common for applicants to choose an unnecessarily large number of goods and/or services, and as a result, they then come into conflict with another, already existing trademark. In this case, less is more. It turns out that choosing even over 10 different goods or services within one class is usually unnecessarily too much. In practice, trademark applications most often contain 2 to 3 classes. The resulting official fee also depends on the number of classes (an indicative price list can be found in the next chapter). It is therefore important to choose (i) the correct class or classes for your goods or services and (ii) the pre-approved terms within that class when completing the application. After registration, you can no longer expand your trademark and in case you want to add more classes, or rather goods or services, you must submit a new application.
If the mark is to be used on your own clothing collection, you should choose class 25 (clothing, footwear and headgear) and choose the pre-approved term 'Clothing; clothes".
If the trademark is to be used to designate a shop or e-shop, selling other brands (retail), select class 35 (advertising; business management; business administration; office functions) and choose the term "Retail clothing services" or "Retail services in relation to clothing via the Internet".
Since the number of selected goods or services within one class is unlimited (i.e. the amount of the fee depends on the number of classes, not on the number of goods and services), companies are often tempted to choose the widest possible range. At the same time, however, this significantly increases the likelihood that opposition will be raised against the trademark or that it will be revoked due to similarity with a pre-existing trademark or due to non-use. Therefore, select only those goods and/or services on which you use or actually plan to use your trademark.
You can read about why the right choice of classes is important and what consequences it may have in practice in our next article.