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trademark coordinated classes

Trademark Law: What are Coordinated Classes and Why are They Helpful?

By John DiGiacomo

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.

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