Keep it Classy: Trademark Application Filing Strategies

One element of trademark application filing that can be confusing is the classification system. When a business files a trademark application, it has to specify the goods or services that it will provide using the mark. Those goods and services are organized under a classification system, numbered from 1-45. Determining what classes to list in your application is a key part of the process, as a mistake early on may result in the need to re-file the application altogether.

Why Have Classes?

Some version of this system is used by trademark offices throughout the world. One advantage to this organization is that it helps when a business is conducting a search to determine whether a new mark is available for use and registration. The most common example of the same mark being owned by different parties is the use of DELTA by the airline and the faucet company.? Faucets are listed in Class 11, and airline services are listed in Class 39. This separation helps to make clear to both the party searching for the potential mark and the trademark office examining attorneys that these goods and services are not so closely related as to be confusing for a consumer. In other words, a consumer would not expect their airline to try to sell them a faucet, or vice versa, so it’s not a problem for these two businesses to use the same mark.

Closer Calls

However, it is important to note that even a mark in a different class can still pose an impediment to use or registration of a new mark. For example, clothing is listed in Class 25, but handbags are in Class 18, and cosmetics and perfume are in Class 3. It is quite common for a company that is primarily known for clothing to also produce bags or perfume, and therefore working with an experienced trademark attorney can help a business to spot which classes may feature related goods or services. When a business conducts a search without using a trademark attorney, it often focuses only on exactly matching goods, and this can be an expensive error.

Filing Strategy

A trademark attorney can work with you to determine which classes are of primary importance at the time of filing. It may be appropriate to file a multi-class application or to file separate applications in different classes, depending on budget and on when the business intends to start using the mark for different types of goods.