How do I determine the Appropriate Classes for my Trademark?

In today's marketplace, your company needs to stand out from other competitors and be recognized by consumers.  You can have the best products or services, but if consumers can't find you among competitors, all your hard work is for naught.  When it comes to protecting your brand, trademarks play a vital role in establishing your unique identity in the marketplace. So, once you have made the decision to apply for a federal trademark, one of the first decisions that you have to undertake is to determine what classes of goods and/or services you want to seek to protect. 

This is a stage where many business owners are stymied and stumped.  Using the trademark classification system and choosing the correct trademark class can be the most confusing part of the filing process.   All too often, people don't understand the significance of this decision, let alone how to accomplish it.   If you are in doubt, then consulting with an attorney experienced in the trademark process can be a very wise investment.  Many such attorneys, including our office, provide such services on a reasonable flat fee basis.

Trademark protection depends on the classification of the goods/services that a trademark registration covers. To ensure effective trademark registration, it is crucial to understand the Nice Classification system (also referred to as "International Classes"). The scope of protection of federal registration of that trademark is only applicable to the specific international class and the goods and services that you designate and pay for in your trademark application. By checking the Trademark Classes, a trademark owner can reduce the odds of a Likelihood of Confusion refusal and potential consumer confusion.

What are Nice Classifications (or International Classes)?

The USPTO uses the term “International Class” to refer to the “Nice Agreement” – a treaty that standardized International Classes worldwide. In the past, each country used its own “code” to list the type of goods and/or services that businesses sold. The Nice Classification system is an internationally recognized system administered by the World Intellectual Property Organization (WIPO). Most trademark offices in other countries have conformed to the Nice classification system.  It categorizes goods and services into 45 distinct classes for trademark registration purposes. These classes are designed to provide clarity and uniformity in trademark registration worldwide.  In essence, a total of 45 classes are utilized to categorize different types of goods and services.   Each class contains information about a service or product to which the trademark applies. When applying for a trademark at the USPTO, an applicant must identify the International classes being sought for protection.  Nice or International Classifications form the backbone of trademark law and registration. Understanding and accurately selecting the appropriate Nice Class(es) for your goods or services is essential to protect your brand and secure exclusive ownership rights. While you can always remove classes, it is not possible to expand classes after the application is submitted.

How are the Nice or International Classes organized?

All goods and services are “classified” or organized into broad categories of goods or services. The Nice Classification system consists of 45 classes, divided into two main categories, as follows:

1. Goods: Classes 1 to 34 cover various goods, spanning from chemicals and pharmaceuticals to clothing, cosmetics, and machinery.

2. Services: Classes 35 to 45 encompass an extensive range of services such as advertising, legal services, insurance, telecommunications, and education.

Each class covers specific goods or services, and it is essential to accurately identify the class(es) that cover your goods or services to obtain the best protection for your brand.  Each of the classes is also further subdivided into many subclasses.  There are thus many items listed in each class; however, goods and services are never in the same class.  When choosing a product trademark, you must look for the class describing the finished product, not the components that go into it.  

The aforesaid classes at the USPTO are broken down at their most generic level in the following manner:

001 - Chemicals

002 - Paints

003 - Cleaning Substances

004 - Industrial Oils

005 - Pharmaceuticals

006 - Common Metals

007 - Machines

008 - Hand Tools

009 - Computers and Scientific Devices

010 - Medical Supplies

011 - Appliances

012 - Vehicles

013 - Firearms

014 - Precious Metals

015 - Musical Instruments

016 - Paper Goods

017 - Rubber Products

018 - Leather Goods

019 - Building Materials

020 - Furniture

021 - Household Utensils

022 - Ropes and Textile Products

023 - Yarns and Threads

024 - Textiles

025 - Clothing

026 - Lace and Embroidery

027 - Carpets

028 - Games and Sporting Goods

029 - Meat, Fish, Poultry

030 - Coffee, Flour, Rice

031 - Grains, Agriculture

032 - Beers and Beverages

033 - Alcoholic Beverages

034 - Tobacco Products

035 - Advertising and Business Services

036 - Insurance and Finance Services

037 - Construction and Repair Services

038 - Telecommunications Services

039 - Shipping and Travel Services

040 - Material Treatment Services

041 - Education and Entertainment Services

042 - Science and Technology Services

043 - Food Services

044 - Medical and Vet Services

045 - Legal and Security Services

How do you know what Classes to seek protection for when filing your Trademark?

Thankfully, the USPTO has a handy tool for determining what classes to file for when applying for trademark protection.  The Trademark ID Manual is available online and can be searched to identify the appropriate classes for your trademark application.  The current version of the Trademark ID manual can be found on the USPTO's website, at the following link - https://tmidm.uspto.gov/id-master-list-public.html

By way of example, a search for "toys" returns a total of 465 results, all of which mention "toys" in a variety of different classes of both goods and services.  A search for "hats" returns no fewer than records or entries, again for a wide variety of different classes of goods and services.  If you cannot locate an entry using the Trademark ID Manual that closely matches your intended use for the trademark, you will have to file a TEAS Standard application and customize the classification (but you will still need to know in what class that type of good or service should be located).  

The Trademark ID manual is thus also a convenient way to determine if there are pre-approved classes that fit your intended use of the trademark and whether you can file under the TEAS Plus filing criteria (and thus pay a lower filing fee). You can seek to protect as many classes as you want when you file your trademark application.  However, you will be assessed a fee for each class.  Likewise, if another identical or similar trademark exists for that same class, your application for that class may be refused.  Additionally, you will have to eventually prove commercial use of the trademark in each class listed for your application to mature into a registered trademark.

Should I File for as Many Classes As Possible?

So long as you intend to use or currently use the trademark in multiple classes, you can file for multiple classes within the same trademark application.  Filing in multiple classes becomes very expensive very quickly.  At the USPTO, not only are you charged a filing fee for each class, you will also be charged a filing fee for each class at the time that you seek to file your statement of use, or renew your trademark during each 5th anniversary the first 10 years, and every 10 years thereafter.  Therefore it is important to carefully examine and only file for the classes that best protect your chosen trademark.  A knowledgeable trademark attorney can be invaluable to assist you in this process and ensure that you are not over-extending your budget by applying for too many classes.  

Additionally, choosing the wrong class can lead to an office action or refusal from the USPTO.  During the examination process, the USPTO examining attorney  will compare your descriptions to other trademark applications and registrations to determine whether there is a conflicting trademark in the same or a similar class.  If they determine such a conflict exists, your registration will be refused.  The USPTO does not provide refunds of filing fees when an application for any class is unsuccessful.  Thus, choosing the wrong class becomes a very costly mistake. 

What are Trademark Filing fees?

The filing fee for your trademark application is dependent on the number of classes that the application seeks to cover or protect.  “TEAS” stands for “Trademark Electronic Filing System.” The U.S. Patent and Trademark Office (“USPTO”) encourages all applicants to file their trademark applications online, and TEAS is the USPTO's online application filing system.  

When you file a TEAS Plus application, you are limited to the options in the Trademark ID Manual to build your listing of goods/services.   The filing fee for Teas Plus is currently $250 per class.

When you file a TEAS Standard application, you can build your listing of goods/services using your own words. The filing fee for TEAS Standard is currently $350 per class.

While TEAS Plus is cheaper, it doesn't allow for custom descriptions. Likewise, as previously mentioned, if you cannot find an adequate or appropriate entry on the ID manual that closely fits your good/service, you cannot utilize the TEAS Plus option.  Rather, TEAS Standard will need to be used in those circumstances when you may need to include custom descriptions, particularly if your goods or services don't fit neatly into any of the classes.

The USPTO requires the appropriate filing fee to be paid in full when you submit your trademark application.  

Can I change the Classes for my Trademark?

Once you submit your trademark application, you are only permitted to amend applications to clarify or reduce—but not expand—the classifications of goods and services that you have listed when you filed. Although the law does not permit altering a preexisting trademark application to add more classes, the trademark owner can always file a new trademark application to expand trademark protection to more classes of goods and services.

Generally speaking, under the law you are not able to change the classes once your trademark application has matured into a trademark registration.  Rather, to seek to expand your trademark to new classes, you will have to file a brand new trademark application and go through the entire process one more time.  The process is currently taking in excess of 14 months, so it is important to plan ahead.

How do I make sure that my Trademark Application correctly specifies the Classes?

Determining the ideal Nice or International Class(es) for your goods or services can be a complex task. It requires a thorough understanding of the classification system and expertise in trademark law. With so many classes to choose from, it can be confusing to know which one best represents the goods and services you plan to offer. Hiring a knowledgeable trademark attorney can help ensure that your trademark is accurately classified and adequately protected.  A skilled trademark attorney will conduct a comprehensive search, review the scope of your goods or services, and accurately determine the appropriate class(es). By leveraging their expertise, they can also advise you on any potential risks or infringements associated with your chosen class(es), in relation to existing trademarks.

At our law firm, we are dedicated to assisting clients in the effective protection and enforcement of their trademarks. We possess the knowledge, experience, and resources to ensure your trademark is classified accurately, allowing you to safeguard your brand identity within your industry.

Contact us today to schedule a consultation and explore how we can guide you through the intricate world of Nice Classifications and trademark law. Remember, securing your trademark is the first step towards building a strong and distinctive brand that can thrive in the marketplace.  Reach out anytime to learn more about our trademark services and both hourly and fixed-fee pricing options.

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