International Classifications for Trademarks

International Classifications for Trademarks

The Nice Treaty 

The United States is a party to the June 15, 1957 Nice Treaty and its subsequent amendments. A US Trademark or Service Mark Registration is granted in one or more of the forty-five International Classifications of the Nice Treaty.

  • There are 34 International Classifications for Trademarks
  • There are 11 International Classifications for Service Marks

For the rest of this article, Trademarks or Service Marks will be referred to as “Marks.” Under Title 15 of the United States Code, the applicant must demonstrate interstate or international use before a federal Mark Registration is granted.

In the United States Patent & Trademark Office (USPTO), a government filing fee is required for each International Class in which an applicant seeks federal Registration. Most companies do not register their Marks in all International Classifications.

How International Classifications Influence the Registration Procedure

As a general rule, US Trademark Examiners will not allow an Application of a Mark to become a Registration if there is a “likelihood of confusion” between the Application’s Mark and another Registration or pending Application for Registration. The examination of the Applicant’s Mark may be limited to prior Registrations and Applications in the same International Class.

An Applicant can be granted a US Registration in some International Classes, but not in other International Classes.

Influence over Registration

In this hypothetical example, we will consider a brand called GoodBad. The company that produces the GoodBad product is seeking registration of its Mark. Let’s review the following possible scenarios:

If GoodBad is a Razor Brand

1.) Applicant seeks registration of the – GoodBad – Mark for razors in International Class 8 (Hand Tools & Implements) and there is a prior Registration of the – Good – Mark for razors in International Class 8.

The Trademark Examiner would probably find a “likelihood of confusion” between the – GoodBad – Application and the existing – Good – Registration and deny registration of Applicant’s – GoodBad – Mark.

2.) Applicant seeks registration of the – GoodBad – Mark for razors in International Class 8 (Hand Tools & Implements) and there is a prior Registration of the – Good – Mark for scalpels in International Class 10 (Surgical, Medical & Dental Apparatus).

The Trademark Examiner would probably not find a “likelihood of confusion” between the – GoodBad – Application and the – Good – Registration and allow Applicant’s – GoodBad – Mark to mature into a Registration.

If GoodBad is a Beverage Brand

1.)  Applicant seeks registration of the – GoodBad – Mark for teas in International Class 30 (Staple Foods) and there is a prior Registration of the – GoodBad – Mark for blouses, coats, dresses, jackets, pants and shoes in International Class 25 (Clothing).

The Trademark Examiner would probably not find a “likelihood of confusion” between the – GoodBad – Application for tea and the – GoodBad – Registration for clothing and would allow Applicant’s – GoodBad – Mark to mature into a Registration.

2.) Applicant seeks registration of the – GoodBad – Mark for coffees and teas in International Class 30 (Staple Foods) and there is a multibillion-dollar company that owns prior Registrations of the – GoodBad – Mark for:

  • Facial makeups in International Class 3 (Cosmetics & Cleaning Preparations);
  • Pharmaceutical compositions used in cosmetology and dermatology treatments in International Class 5 (Pharmaceuticals);
  • Custom-made bedroom, dining room and living room furnishings in International Class 20 (Furniture);
  • Blouses, coats, dresses, jackets, pants and shoes in International Class 25 (Clothing); and
  • Wines in International Class 33 (Wines & Spirits).

In this scenario, some Trademark Examiners would allow the Applicant’s – GoodBad – Mark for coffees and teas to be published for Opposition while other Trademark Examiners would deny registration. Should Applicant’s – GoodBad – Mark be published for Opposition, there is a high probability that the multibillion-dollar company would file either a USPTO Opposition or Cancellation Proceeding against Applicant’s – GoodBad – Mark.

If GoodBad is a Service Brand

Applicant seeks registration of the – GoodBad – Mark for the provision of continuing education services for physicians, surgeons and other medical personnel in International Class 41 (Education & Entertainment Services) and there is a prior Registration of the – GoodBad – Mark in International Class 36 (Insurance & Financial Services) owned by a multistate national bank that also specializes in the provision of accounting services for physicians and surgeons under the – GoodBad – Mark.

Although each – GoodBad – Mark is associated with a different International Class, it is highly probable the Trademark Examiner would find a “likelihood of confusion” between the – GoodBad – Application and the – GoodBad – Registration and deny registration of Applicant’s – GoodBad – Mark.

Need Help With International Classifications?

If you have questions about your company’s Marks or you seek to register a Mark, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Federal Registration of Trademarks

Federal Registration – Trademarks/Service Marks

Is Federal Registration of My Company’s Trademark/Service Mark required?

No.  However, if the company’s Trademark/brand is not registered, it becomes more difficult to enforce the company’s rights associated with its brand. If a federal Registration is not procured, then the owner of the Trademark/Service Mark must rely on State or common law precepts to prove infringement.

Federal Registration Advantages Include:

  • The symbol “®” can be placed in proximity to the Trademark/Service Mark giving notice the Trademark is registered in the United Patent and Trademark Office
  • Substantive and procedural rights attributable to federal jurisdiction (rather than using a state’s law to control adversarial proceedings)
  • Prevention of the registration of another Trademark/Service Mark in the United States Patent and Trademark Office that is confusingly similar
  • Creates a basis for international Madrid Protocol Trademarks/Service Marks
  • Constructive notice of ownership and date of first use in interstate or international commerce

Wise Business Owners Procure Federal Registration Because:

  • Over time, the Trademarks/Service Marks can mature into the company’s most valuable asset
  • Trademarks/Service Marks are foundational components of most franchise agreements
  • Trademark/Service Mark licenses can provide a royalty stream for the registrant
  • If your company does not procure a United States Trademark, another company can procure a federal Registration of your company’s Trademark and limit your company’s usage of its brand to the geographic areas in which your company’s use was prior to the registering  company’s use of your brand name
  • After five years of continuous use, your company’s federal Registration becomes incontestable, unless one or more of nine statutory defenses can be proved by the party contesting your company’s United States Trademark/Service Mark

If you have questions about your company’s Trademarks/Service Marks, please contact Business Patent Law, PLLC and we will discuss possibilities for your business and intellectual properties.

If you would like to stay up-to-date with news that impacts your intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.