Trademark Coordinated Classes: What They Are featured image

Trademark Coordinated Classes: What They Are

by John DiGiacomo

Partner

Trademark

We start by understanding that all trademarks must be registered in association with some product or service. For example, the trademark PEPSI is most highly associated with a beverage, and EXXON is associated with petroleum products. For purposes of administration and management, trademark offices around the world have subdivided the vast number of goods and services into classifications (“classes”). These classes are standardized across countries via international treaties.

In the United States, the federal agency that handles trademark registration is the U.S. Patent and Trademark Office (“USPTO”). The USPTO uses 45 classes that are intended to cover all goods and services. Classes 001-034 are for goods, and classes 035-045 are for services. Each class is broad, and within each class are hundreds of subclasses. For example, class 1 includes chemicals and class 002 covers paints.

This brings us to the concept of “coordinated” classes. In simple terms, coordinated classes are classes that are related in terms of use. For each class, the USPTO has designated it and several other classes as “coordinated classes.” These designations are based on common sense and, more importantly, on a statistical analysis of how often applicants, who file within one particular class, also file in another specific class in the same application. For example, for class 010 (which is for medical apparatus), the USPTO has listed these as:

  • 005 Pharmaceuticals
  • 035 Advertising and business services
  • 042 Computer, scientific and legal services
  • 044 Medical, beauty, and agricultural services

For Class 25 (clothing), these are listed as coordinated classes:

  • 014 – Jewelry
  • 018 – Leather Goods
  • 024 – Fabrics
  • 035 – Advertising and Business Services, and
  • 042 – Computer and Scientific Services

See the full list here.

Why are coordinated classes useful?

When seeking to register a trademark, one crucial first step is to conduct a trademark clearance search. Among other tasks, this involves searching the USPTO databases for already-registered trademarks that are the same as or similar to the proposed trademark. The searches are done by class since similar trademarks can be used for different goods and products. Using the coordinated class designations helps ensure a proper and thorough clearance search since a similar trademark might not be found in exactly your proposed class but might be located in one of the coordinated classes.

Coordinated classes will also give some guidance as to whether a similar trademark — but in a different class — might cause problems with registration. Likely, if a similar trademark is in a coordinated class, the similarity of the trademarks will raise concerns with the Examining attorney.

In addition, when you file an application with the USPTO to register a trademark, on the application you must identify at least one class with which the trademark will be associated. However, you can choose several. A close examination of the USPTO’s coordinated classes might suggest that additional classes should be identified. This can be important since, by choosing more than one classification, you broaden the legal protections for your trademark. The broader the coverage, the more you can protect your trademark from infringing use.

Contact The Trademark Attorneys At Revision Legal For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

How Coordinated Classes Are Used During Trademark Prosecution

When a USPTO examining attorney reviews a new trademark application, the search for conflicting marks is not limited to the exact class the applicant filed in. The examiner also searches coordinated classes for potentially confusing marks. This practice reflects commercial reality: consumers and businesses often associate related goods and services with the same brand even when they technically fall under different trademark classes.

For example, if you file to register a clothing brand under Class 25, the USPTO examiner will also search Classes 14 (jewelry), 18 (leather goods), 24 (fabrics), 35 (advertising), and 42 (computer services). If a previously registered mark in Class 18 is confusingly similar to yours, you can receive an office action refusing your application, even though your filing was in an entirely different class. This is why the trademark clearance search a qualified trademark attorney performs must span all relevant coordinated classes, not just the filing class.

Coordinated Classes and the Likelihood of Confusion Analysis

The central test for trademark registration refusal is whether the applicant’s mark is “likely to cause confusion, or to cause mistake, or to deceive” under 15 U.S.C. § 1052(d). The USPTO’s Trademark Manual of Examining Procedure (TMEP) Section 1207.01(a) specifies that examining attorneys must consider whether the goods and services of the applicant and the cited registrant are “related.” Coordinated classes provide a built-in framework for that relatedness analysis.

Courts have consistently held that goods and services need not be in the same class — or even directly competitive — for confusion to be likely. The key question is whether consumers encountering both marks would assume they come from the same source. Goods in coordinated classes are, by the USPTO’s own statistical analysis, frequently purchased together or associated with the same brands in the marketplace. That makes confusion between marks in coordinated classes much more likely than between marks in entirely unrelated classes.

Strategic Implications: Filing in Multiple Classes

Understanding coordinated classes also informs strategic decisions about multi-class filings. Brand owners who plan to expand into related goods and services should consider whether to file now in coordinated classes, even before actively using the mark there. Under 15 U.S.C. § 1051(b), an applicant may file based on a “bona fide intent to use” the mark in additional classes. Securing registrations across coordinated classes preemptively prevents competitors from filling the adjacent space with confusingly similar marks.

Conversely, failing to search coordinated classes before launching a brand is one of the most common and costly errors in trademark strategy. A business can invest substantially in brand development, packaging, and marketing only to receive a cease-and-desist letter — or a USPTO refusal — because a similar mark exists in a coordinated class the business never considered.

Working With a Trademark Attorney on Coordinated Class Strategy

A trademark attorney familiar with USPTO search procedures will factor coordinated classes into every clearance search and application strategy. This means:

  • Running the clearance search across all coordinated classes for the intended filing classes
  • Assessing the risk that a mark in a coordinated class creates a conflict with your proposed trademark
  • Advising whether to file in additional coordinated classes to protect the brand’s expansion path
  • Responding to office actions that cite marks in coordinated classes with targeted arguments about the distinctiveness of the channels of trade and consumers

At Revision Legal, our trademark attorneys run thorough searches that account for coordinated classes and provide clients with a clear-eyed assessment of trademark risk before filing. Call us at 231-714-0100 or 855-473-8474 to discuss your trademark clearance search and registration strategy.

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