Selecting The Right International Classes For Your Trademark Application
When you apply for Trademark registration in the United States, you must file for specific services and/or products in specific classes. These classes are known as “International Classes.”
“Use” vs. “Intent to Use”The first step to deciding which classes you should include in your Trademark application is to determine under what “basis” you are applying.
When applying for a Trademark registration, you can either file your application based on “commercial use” or reserve the rights to the Trademark through an “intent to use” application. Between these two routes, the former is the quickest and most direct; however, all products and services listed in the application must be currently being sold or provided in the United States, using the Trademark.
It is common for Trademark applicants not to understand what “commercial use” means, which usually results in delays or even loss of a Trademark registration.
“Commercial use” means that a bona fide commercial enterprise sells products or provides services to actual customers and clients, and promotes these products and services by using the registered Trademark.
Then again, if you are still preparing to use a Trademark on some of your products, you can “reserve” the rights to the mark by filing an “intent to use” application. This kind of Trademark application only requires a “bona fide intent to use” in for-profit activity in the U.S. However, this does not mean that you can include products not intended on selling or services not intended to provide; this could result in a challenge to the resulting Trademark registration.
However, if you file an “intent to use” Trademark application for some products or services, and end up not actually producing or providing all of these products or services, you may be able to remove the unsold products or the unoffered services from your Trademark application without losing the progress on the Trademark registration process for the remaining products or services.
For example, if an applicant applies for Trademark registration with a bona fide intent to use the Trademark to sell cookies and ice cream, the USPTO will issue a preliminary approval of the application. If, once the preliminary approval is issued, the applicant no longer plans to sell cookies, he or she may have the opportunity to remove “cookies” from the Trademark application. Assuming there are no other issues with the application, the registration process would continue with just the ice cream.
Identifying Products and ServicesIt is common for Trademark applicants to incorrectly identify their products and services. This is a crucial step, as the USPTO is looking for a plain, non-technical description of what consumers will get when they purchase your products or services.
For example, if you offer restaurant services, you need to include “restaurant services” in your Trademark application. However, some Trademark applicants incorrectly assume that they should add “advertising services,” “social networking services,” “payroll management services,” or any other services that a company may provide for itself and for its employees but not for its clients and customers.
The USPTO is largely focused on how the consumer will perceive the products and services offered. For example, if your company offers a platform that allows users to track their stock portfolio, then you might identify your services as “providing online financial monitoring.”
In the example above, you would not include “financial services” because you are not offering the financial services themselves – you are offering the online monitoring platform.
Working with an Experienced Trademark AttorneyIncluding the right international classes in your Trademark application is a key step, and making mistakes could potentially damage your business and the products and/or services it offers. This is why, when filing a Trademark application, you must always work with an experienced Trademark Attorney to develop a strategy that includes the appropriate type of application, accurately identifies your brand’s products and services, and considers your plans for the future growth and expansion of your business.