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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).
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.
The 45 trademark classes established under the Nice Agreement are divided into two broad categories: Classes 1-34 cover goods (physical products), and Classes 35-45 cover services. Every trademark application must identify at least one class, and if your goods or services fall within multiple classes, you must file and pay for each class separately. The USPTO charges $250 to $350 per class per application (depending on the filing basis and form used), so identifying the correct classes from the outset is a real financial concern, not just a technical formality.
Some of the classes that frequently come up in internet business and e-commerce trademark registrations include:
The specific identification of goods and services within each class matters as much as the class itself. The USPTO’s Trademark ID Manual contains thousands of pre-approved identifications — specific descriptions of goods and services — that the USPTO will accept without objection. Using pre-approved identifications streamlines examination and reduces the likelihood of an Office Action requiring clarification. Where a pre-approved identification does not fit precisely, a custom identification must be drafted carefully to be definite enough to satisfy the USPTO while broad enough to cover the trademark owner’s actual commercial activities.
As the existing content notes, trademark protection operates largely within the class (and subclass) in which your mark is registered. A mark registered only in Class 9 for software does not automatically protect you against a competitor who uses a similar mark in connection with Class 35 retail services or Class 41 educational content. If your business spans multiple classes, registering across those classes provides broader protection and a stronger basis for enforcement.
The trademark class search process should therefore not just identify the primary class for your core goods or services — it should map out all of the classes that correspond to your current business activities and your planned expansion. A tech startup that today sells only downloadable software (Class 9) but plans to add a SaaS offering (Class 42), consulting services (Class 35), and online training (Class 41) should consider filing in all of those classes at the outset, or at least building a registration roadmap that adds classes as the business expands. Waiting until a competitor files a confusingly similar mark in an adjacent class is a reactive posture that can result in costly litigation or loss of important rights.
Within each broad class, the specific goods or services identified in the registration matter enormously for enforcement purposes. A mark registered for “clothing” in Class 25 may provide a narrower scope of protection than one registered specifically for “athletic apparel, namely, shirts, pants, and jackets.” Courts evaluating likelihood of confusion look at the specific goods and services in the registration, not just the class, when assessing whether the parties’ products are commercially related enough to create consumer confusion.
At the same time, overly specific identifications can leave important gaps. A business that registers its mark for “downloadable mobile software for personal finance management” may find itself without recourse against a competitor using a similar mark for “downloadable mobile software for business expense tracking” — similar enough to create confusion in the market, but potentially different enough under the registration language to complicate a likelihood of confusion claim. The trademark class search and the preparation of the identification of goods and services require genuine legal expertise to balance breadth and specificity correctly.
Once a trademark application is filed and the class search confirms the correct class and identification, the USPTO examines the application — typically within eight to twelve months of filing. The examining attorney reviews the application for compliance with all legal requirements and searches the USPTO database for conflicting marks. If the examiner identifies a conflict or an issue with the identification of goods and services, an Office Action is issued. Applicants have three months to respond to an Office Action (extendable to six months for a fee). Experienced trademark attorneys resolve most Office Actions efficiently, but complex conflicts with prior registrants may require negotiation, consent agreements, or appeals to the Trademark Trial and Appeal Board.
A trademark class search is the foundation of every successful trademark registration strategy. Getting the class and identification of goods and services right from the beginning protects your investment in the registration process and maximizes the enforcement value of the resulting registration. The trademark attorneys at Revision Legal conduct comprehensive class searches, advise on multi-class registration strategies, and handle the full registration process from initial filing through issuance. Contact us through the form on this page or call (855) 473-8474.
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