Do you need to file your trademark according to the U.S. trademark classification system?
No—in September 1973, the U.S. classification system was replaced with the International Classification of Goods and Services for the Purposes of the Registration of Marks. The same 45 Nice Categories of goods and services (named after the city of Nice, France, where the first classes were negotiated) have since been used in both Europe and the United States.
U.S. Trademark Classes—A Thing of The Past
Trademark applications filed at the United States Patent and Trademark System (USPTO) are now organized according to the international class system. For applications filed on and after the official change-over, a list of corresponding U.S. classes is generated by the USPTO during the registration process.
Wasn't that decision refreshingly prudent of our legislative predecessors? Now, if only we could further streamline the various trademark registration processes around the globe!
If you want to learn more about The International Nice Classifications look no further. We've outlined an "international classification cheat sheet" with the most important facts you need to know.
The International Trademark Class "Cheat Sheet"
1. Specify Goods and Services
Filing a trademark application in the United States? You must indicate the goods and services you are currently using your trademark with (or plan to use for in the future).
Unfortunately, you can’t register a trademark in the abstract simply because you like it—see #4.
2. Look Out for Canada
There are always exceptions, as is the case with Canada. While most countries do in fact use the Nice Classification System for their marks, Canada is arguably the most prominent that does not. Check here to learn more about Canadian trademark registration.
3. Know The 45 Classes
Classes 1 to 34 are for goods, and numbers 35 to 45 are for services. Not sure which class your mark fits into? Leave the box blank and the examiner who reviews your application will choose the right one. Click here to review a breakdown of classes.
4. Abstract Registration is Prohibited
Want to register a trademark without a specific use in mind? Unfortunately, marks can not be registered for abstract use. This is actually good news; it's a policy meant to discourage competitors from sitting on great marks without taking action! Remember, you can always expand to different classes in the future.
5. Expect Separate Class Fees
One mark can cover multiple classes, but expect to pay individual filing fees for each class. The amount of those fees will depend on the application filing option selected: TEAS Plus ($225), TEAS Regular ($325) or TEAS Reduced Fee ($275). Each option will mandate different application requirements.
6. Class Choice Isn't Always Obvious
Class matches are often determined in surprising ways. For example, skin care products that are used as cosmetics qualify as Class 03, but those that are used as medicine qualify as Class 05. Downloadable software fits into Class 09, but non-downloadable software is considered a service in Class 42. And, in one of the more puzzling classifications, beer fits into Class 32, while other alcoholic beverages are in Class 33.
7. It's Just a Clerical Aid
Though it may be tempting to view class systems as protective mechanisms against "likelihood of confusion," the reality is far from it. The international class system is simply an organizational tool for filing purposes. Which is why TrademarkNow has created a risk assessment database designed to evaluate similarities between actual products.