I have a business selling a wide variety of items made out of resin. What class of trademark do I need for the Business name?
4 attorney answers
I recommend you talk to a trademark lawyer for specific guidance.
One thing to keep in mind is that you might need multiple classes. Look at it from the perspective of the end products that you create. If your end product is a mug, maybe class 21 is more appropriate. If you also make gift boxes, you may further need to file in class 16.
Finally, consider whether you're actually selling a service rather than a specific product.
A trademark lawyer can help you with your particular situation. Good luck!
I am not your lawyer. This is not legal advice. I don't guarantee any results.
To add to my colleague's comment, maybe you need 35 for e-commerce. The end product, as noted, is important because trademark infringement doesn't require goods or services to be identical, it only requires a "likelihood of confusion." That means that a user making goods out of some other material than resin could still infringe on your goods, or vice versa.
Choosing a trademark that's both viable and available isn't a DIY job. About 1/2 of all USPTO applications fail, the fees are non-refundable, an the cost is high in terms of time and money if you don't get it right the 1st time (or ever) and you have to re-brand or fight a competitor at the TTAB or in federal court.
Hire an IP lawyer to do this correctly.
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.
It sounds like you need to go through some basics, first. Is the business name going to appear on labels, tags or packaging as a trademark or just in the fine print like an address. The trademark doesn't need to be the business name. It could be the same, or shortened, or unrelated. CHEVROLET isn't the name of General Motors Corporation. GMC is an abbreviation of the corporate name. Figure this out so you don't waste money -- and retaining a trademark lawyer will get you guidance on the most efficient filing. Next, the trademark lawyer can also guide you on classification. It doesn't sound like you are selling paint. It sounds like you are selling finished products. Maybe they are made of cured resin. Maybe they are made from thermoset plastic. Maybe the plastic is colored, maybe it is painted, all of which have nothing to do with classification for the finished products. Maybe they are decorative figurines. Probably class 20. I'd look it up for a client. Maybe they are tokens or pieces for games. Probably class 28, toys and sporting goods.
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We don't have enough information here to say conclusively what class or classes you need to be filed within. I will offer some general remarks about trademark below, but you should get some proper advice you your application.
Before you invest in any trademark of your own make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the OH secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Legal, LLC on the basis of this posting.