Don’t fall for this trap at the
trademark office’s website!
When doing your first trademark search to see if there is anything that is similar to yours, the first recommended place to look is the United States Patent and Trademark Office (USPTO) website: https://www.uspto.gov/.
But once you are there, you might be confused by a lot of terms on the website. Or you might not know what is most important.
If you Google this topic, one of the suggestions of what you should look for first when running a trademark search is the class.At Indie Law, however, we encourage you to think a bit differently. Trademark classes are important to consider, but the analysis shouldn’t end there.
That’s why today we will explain what trademark classes are and what you should know when reviewing trademarks in various classes.
What are the trademarks classes?
A trademark “class” is the USPTO’s way of organizing the goods and services that are described in your trademark application and registration. The USPTO has basically designed their class system so that anything you could ever imagine selling fits into one of 45 different classes.
It is possible for one trademark application or registration to describe products and services that fall under multiple classes. There is a filing fee associated with every class you claim in your application.
Why are classes not determinative as to whether or not your trademark can be successfully registered?
At Indie Law, we’ve found that business owners commonly make two big mistakes when it comes to trademarks and classes.
The first mistake is thinking that if another trademark is listed under a separate class as yours, then it’s not a problem and won’t impact your ability to get your trademark registered.
For example:, let’s say you run a clothing brand and sell athletic apparel. You will likely file under Class 25. You find another brand with a very similar name, but it’s actually a gym and its trademark registration is classified under Class 41. You assume that since the classes are different, these similar trademarks can coexist.
The second mistake is thinking that if another trademark is listed under the same class as yours, then all hope is lost and you have no chance to get your trademark registered.
For example: let’s say you host a podcast for business owners and entrepreneurs. Podcasts generally fall under Class 9 or 41. You find another trademarked podcast with a similar name that is all about true crime. And you assume that since the classes are the same, these similar trademarks cannot coexist.
In both of these instances, you’ve arrived at the wrong conclusions!
Trademarks are weird, but it’s important to keep this in mind. The trademark class structure is designed, more than anything else, to create a sense of order and categorization at the USPTO. While reviewing trademark classes can reveal major flags, that’s not always the case.
How is that the case? Well, what we’re really concerned with here is a topic called the “likelihood of confusion.” A likelihood of confusion exists between trademarks when
(1) the trademarks are so similar
(2) the goods/services delivered are so related, that consumers would mistakenly believe that they come from the same source.
And the last part of that sentence is key: that consumers would mistakenly believe that they come from the same source.
You see, in both of the examples provided above, the trademark classes aren’t very instructive as to whether a likelihood of confusion exists.
In the first example, a likelihood of confusion is present, even though the trademarks are housed in different classes. Think about it. Gyms often sell branded swag. So it’s very possible that a consumer could think that the athletic clothes are made by the gym, or that there’s some kind of sponsorship or relationship between the two brands.
In the second example, a likelihood of confusion is not really present, even though both brands’ podcasts are housed under the same class.
These two brands can likely coexist, because the nature of the podcasts are so different and unrelated.
That is why audience, sound, logo appearance, and commercial impression play a more important role than class.
We invite you to watch this video made by Joey Vitale, the CEO & Founding Attorney of Indie Law, so you can understand more about this process and how to better evaluate your research findings on the USPTO website: https://www.facebook.com/indielawfirm/videos/1097745534370008/
If you are still not 100% clear about which class your brand may correspond to, or even how to start your initial search, contact us!
The first call is on us!