To be registered, a trademark must be associated with a trademark “class.” A “trademark class search” is intended to help a trademark owner identify the correct trademark class for the purposes of completing a trademark registration application. It is best to have experienced trademark attorneys — like the ones at Revision Legal — conduct your trademark class search. This maximizes your chance of making the correct choice — or choices — with respect to the trademark class with which your trademark will be legally and officially associated. Here is a brief explanation.
Currently, there are 45 broad trademark classes, 34 for products and 11 for services. These classes are based on the “Nice Agreement,” which is an international treaty that was negotiated and first signed in the French city in 1957. The Nice Agreement is administered by the World Intellectual Property Organization.
Within each broad class are hundreds — and even thousands — of subclassifications. Generally speaking, many of the trademark classes are based on the function of the product.
For just one example, consider the various classes that might involve copper. The copper itself is Class 6, which is for metals, ores, and metal products. But, if the copper is for scientific research or being used for its chemical nature, then the trademark class would be Class 1 — for chemical products. On the other hand, if the copper is for electrical cables, that would be trademark Class 9. If the copper is in a foil or powder form for painting or art, then the class would be Class 2. Copper pipes for plumbing is Class 11, copper hand tools would be Class 8, copper kitchen utensils, cages, and containers would be Class 21, copper paper clips would be Class 16, copper furniture would be Class 20, etc.
As can be seen, finding the correct broad trademark class can be complicated, given the number of possibilities. This is the purpose of a trademark class search. As noted, the broad trademark class is likely to be based on the function of the product being made. The next step in the trademark class search is to find the subclass. The subclasses are generally identified by what the product is made from. So, “kitchen utensils” will likely identify the broad trademark class — which is, as noted above, Class 21. From there, the subclasses might break apart into types of utensils and then into subclasses based on what the utensils are made of.
Why Does a Trademark Class Search Matter?
To oversimplify, a trademark registration only provides protection against infringement within your trademark class (and, possibly, only within your subclass). If you choose the wrong trademark class, you will not be able to sue your competitors for trademark infringement. To explain, most trademark infringement litigation concerns whether the competing trademarks are “confusingly similar.” A large component of “confusingly similar” is whether consumers — in a market segment — will be confused by the two trademarks. Generally, there is little chance of consumer confusion if the market segments are different. An example is Delta Airlines vs. Delta faucets and plumbing fixtures. In effect, the trademark classes and subclasses identify relevant “market segments.” So this is one reason that many trademark owners register their trademarks in several classes (even though registration costs increase with the number of classes chosen).
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