While I realize there's always a gray area 009 and 041 seem to be the most appropriate.
Trademark Application Attorney
Greetings from up the road in McLean/Tysons Corner!
Generally, computer software for mobile applications is classified in International Class 009.
Please keep in mind that trademark questions are very fact specific and it would be in your best interest to consult with a local intellectual property attorney who can review your specific plans and provide you with advice tailored to your specific situation. Remember that trademark application fees are non-refundable, so if a mistake is made on an application, you may be out that money if the mistake is something that cannot be fixed. That is why it is worth your time and money to consult with an experienced trademark attorney before you file your application.
Best of luck!
This answer is for general information purposes only. This communication does not constitute legal advice, nor does it form an attorney-client relationship.
Trademarks are applications, not filings, and they're not automatic. Spending an hour with a trademark lawyer to practice some "preventative law" is the best idea. Realize you can't expand the description of your goods and services once you file, and also realize that the USPTO fees aren't refundable, so getting it right the 1st time is important.
Also realize that computer software is uniquely copyrightable and patentable, as well as trademarkable, so a trademark might not be the best solution here.
Don't try to do this yourself.
Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.
Trademark Application Attorney
All computer software, which I believe includes "apps," is classifiable in either Class 9 (electronic goods) or Class 42 (computer and technical consultation services). Class 41 generally covers education and entertainment services but only applies to services classified by their content. Since software is not usually classified by the content, Class 41 should not apply here. However, if the app or software is considered a website that "provides information," that information service is classifiable by the content and could be in Class 41 if deemed education or entertainment-related.
The difference between software classified in Class 9 and in Class 42 is that Class 9 software is downloadable - i.e. storable and retrievable in and from one's own system like when the software is on a CD, although nowadays it is simply downloaded from the internet, but it must remain in the computer hard drive (or an external memory device). Software in Class 42 is "nondownloadable" software, e.g. "software as a service" or application software generally only available for use when the user accesses a particular website but not stored in their own system retrievable at will. This nondownloadable software is considered to be like a computer service which is why it is classified in Class 42.
Ms. Longo is correct that you should consult an attorney because oftentimes errors involving the information contained in an application may not be correctible and applicants can lose their filing fee because of a fatal error in the application content. For example, if you apply and pay for more than one Class but then must eliminate a Class, the filing fee paid for that Class will not be refundable. As such, the money you save by not consulting an attorney could very well be money you lose anyway by incorrectly filing your application and needing to re-file it again for the same filing fee(s).
Alex Butterman is a trademark attorney with Staas& Halsey LLP (http://www.staasandhalsey.com), a Washington, D.C. IP boutique law firm. Alex is admitted to the bars of Washington, D.C., New York and New Jersey but, unless otherwise specified, the answer is intended to be general enough to apply to any U.S. state and based primarily upon his knowledge and experience with applicable federal laws. The opinions expressed are those of the author and do not necessarily reflect the views of his firm, Avvo or other attorneys. This answer is for general information purposes only and is not intended to be and should not be taken as legal advice. No attoreny-client relationship or obligations are established herein, although consulting an attorney to discuss your specific situation is strongly recommended. This is especially true of trademark law and probably any area of intellectual property law because TM law is so fact-specific and full of esoteric nuances and exceptions, that more often than not there does seem to be harm in handling a trademark matter without consulting an experienced trademark attorney.
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Intellectual Property Law Attorney
No offense but it sounds like you are trying to file this trademark application on your own. Please don't be foolish enough to think you can do this without retaining experienced trademark counsel. And while I am on the subject, I hope your have retained counsel to advise concerning whether your application would violate patent law, trademark law and copyright law. There is extensive ongoing litigation concerning "news aggregation" web-sites and phone applications. You should not assume, for example, that it is legal for your application to provide links to other web-sites which provide original news content. You also should not assume that your app can legally classify, summarize and organize news content provided by others without violating copyright law and engaging in unfair competition. Operating a phone app that specializes in news is no different than going into the publishing business---and that means you should be working closely with IP counsel.
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Intellectual Property Law Attorney
009 is for a product, 041 is for a service. If you have a one-time charge for the app, it is a product. If your app connects to a server on an ongoing basis to receive some service, then it is a service and 041 is more proper. If both, then either or both are proper. If you are having these types of questions, that should tell you that you need to be using a trademark attorney to file this at the USPTO.
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.
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