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COPYRIGHT BKIP 2019
Do I have to register my trademark under a CLASSIFICATION? Mar 2019
As a practicing trademark agent, I have found that many clients do not know what a classification is or the importance of it. The United States Patent Trademark Office (USPTO) requires all that are registering their trademark to do so in either of the 45 categories set out in the NICE Agreement which was adopted in 1957.
The classifications have a breakdown of all goods and services. From the 45 categories classifications 1 – 34 describe goods and classifications 34 -45 classify services. Each classification has a broad definition so that in one class many items can be trademarked. This allows everyone to have a chance of registering their trademark no matter what it may be.
Classifying your trademark will offer you protection. If somebody else wanted to register the same or similar mark they cannot do it in that class. However, they can register your same mark in a different class. This is why it is advised to register you trademark in more than one classification for wider protection of your trademark. This will allow you to effectively use of your trademark in the running of your business.
It is also important to look at the reasons why the USPTO want us to classify our trademark. Each year there are thousands of trademarks being registered. Classifying trademarks helps them to keep track of all trademarks that are being registered. The USPTO ensures that nobody is infringing your mark by copying it exactly as it is. It is also making sure that nobody else is using a similar mark to yours or one that is causing confusion or one that is descriptive. Classifying your goods will help the USPTO identify your trademark.
Before registering your trademark, think about which class your business falls in. To answer this question, you need to ask yourself what goods or services am I providing? For example, a popular classification in the United States is class 25. Class 25 protects clothing, footwear and headgear. If you are also selling the goods then class 35 will also be relevant. This is because class 35 is for Advertising and Business. Another popular classification is class 42 which covers computer and scientific services. This includes technology and research services. This is similar to class 9 which covers electrical and scientific apparatus and includes computer software and electronics. To a certain extent they are similar and you may need to register in both classes for your business.
The NICE Classification has been adopted internationally in over 50 countries. This is advantageous to us because in the event that we would like to register our trademark in those listed countries the same classifications will apply.
In conclusion, yes, you do have to classify your trademark in either of the 45 classifications provided by the USPTO. Classifying your goods in the right class is important to protect your goods, identify and distinguish them against others. From the 45 classes pick more than one to serve you and your business better.