A trademark class is a category in which a
trademark is put into. Each class covers certain similar goods or services
which the trademark covers. For example, class 25 covers clothing. If you apply
for a trademark and tell the trademark office that your trademark will be used
to represent shirts, for example, your trademark will be put into class 25. You
can potentially get a trademark for a name that someone already has a trademark
for, if you apply for a different class.
When you apply for a trademark, you need to
tell the trademark office what goods or services this trademark will represent.
For Before reading further, make sure you understand the basics of what a
trademark is. You should know what it means that a trademark acts as an identifier
of source. To get the 101 on trademarks, read What is a Trademark? first.
example, Coke will tell the trademark office
that the Coca-Cola trademark will be used to represent soft drinks. When people
see Coca-Cola on soft drinks, Coke wants people to know that the soft drink was
made by Coca-Cola. When approved, Coke’s trademark will prevent people from
using the Coca-Cola name on soft drinks, and anything that is similar to soft
drinks. This is because soft drinks was indicated on Coke’s trademark
application. If someone uses the name Coca-Cola on a completely unrelated
product, bookshelves for example, they may be able to do so since bookshelves
are quite different from soft drinks.
When the trademark office looked at Coke’s
trademark application for Coca-Cola, they put the trademark into class 32 which
is the class for most beverages. This is because when Coke applied for the
trademark, they told the trademark office the trademark will be used to
represent soft drinks and the trademark office knew to put the application into
class 32. Now that they have their trademark approved and put into class 32,
the class can help others determine how much protection the trademark covers.
Generally speaking, if Coke has a trademark in class 32, you likely cannot use
their trademark with any product that is also in class 32. For example, you
likely cannot use Coca-Cola to sell juices. Further, if you applied for the
trademark Coca-Cola to try and represent any product in class 32, such as
juices for example, you likely will be rejected. This is because Coke already
has a trademark for Coca-Cola in class 32, and you are trying to apply for the
same name to represent goods in the same class Coke already is in.
Generally speaking again, if you were to apply
for the same name in a different class, you may be able to get a trademark.
Let’s look at an example with the name “Dove”:
You can see above that there is a Dove soap
and there is also a Dove Chocolate, trademarks owned by two separate companies.
The simple explanation as to why they can both own trademarks for Dove is
because they have applied for trademarks in different classes. Dove owned by
Mars is in class 30 for chocolates, whereas Dove owned by Unilever is in class
3 for soaps.
However, there is a longer explanation. The
real reason that both companies can each own a trademark for Dove is not
necessarily because they have applied for goods that are in different classes,
but rather because the trademark office believes that people buying Dove
chocolate will not be confused and think that the chocolate was made by the
company that makes soap. Vice versa, the trademark office believes that people
buying Dove soap will not think the soap was made by the company that makes
chocolate. The key is that the trademark office is convinced that there is
no likelihood to cause confusion by both companies each
having the trademark for the name Dove. In other words, the main reason Dove
chocolate and Dove soap can both exist is because the trademark office
considers chocolate and soap different enough that people will not be confused
as to which company is making each. It just so happens that chocolate and soap
are in different classes, which is usually true when two trademarks of the same
name coexist, but not always.
Building on this concept, it is possible for
two people to have the same trademark and coexist in the same class.
Conversely, it is possible to apply for a trademark that already exists in one
class, but file it in a different class and get rejected. It all comes down to
whether the trademark office thinks the goods and services that are represented
by the two marks are likely to cause confusion with buyers. For example, Coke
has a trademark Coca-Cola for sodas in class 32. Tea drinks are actually part
of a different class, class 30 which is the class for tea and coffee. If you
were to apply for a trademark for Coca-Cola in class 30 for tea, do you think
you would be approved? The answer is likely not. Because tea and soft drinks
are both drinks, it is likely for buyers to be confused if you have a trademark
for Coca-Cola in class 30 and Coke has one for class 32. If you label your tea
as Coca-Cola, buyers will not be sure whether the tea was made by you, or by
Coke, and thus confused as to who made it. In this example, even though you are
applying in a different class than an existing trademark of the same name, you
are likely to be rejected. In an example of the reverse, if you are applying
for a mark in a class where another same mark already exists, you could still
get approved if you can convince the trademark office that the goods you are
selling are so different from the goods of the other mark in the same class
that there would be no confusion to buyers. However, this is generally
difficult since the trademark class system has been designed so that similar
products and services are put into the same class.
So let’s think strategy. Let’s say you start a
company called Widget and you will sell sodas and teas. You want to prevent
others from also selling sodas and teas by the name of Widget. Should you apply
for sodas in class 32 or teas in class 30? The answer, is for best protection
you should apply for both. If you have one trademark for sodas in class 32 and
another for teas in class 30, you ensure that both teas and sodas are covered.
Filing in both classes, however, requires double the fees. The trademark office
charges for each different class you file in. You may say well let me just file
in class 32 for sodas only, I should be fine since you said earlier if someone
else files for the same name in class 30 for teas they likely would be rejected
by the trademark office since teas and sodas are so similar. This may be true,
but do you want to risk it? If someone can make a convincing argument to the
trademark office that the teas they sell will not cause buyers to be confused
with the sodas you sell, they may get the trademark for teas in class 30.
Therefore, to be safe, the best way is to file for both class 32 and class 30,
and pay double the fees needed to do so. This is how the major corporations do
it. They will cover many classes to ensure that people cannot use their
trademark name on practically any good or service. As of this writing, Coke has
61 trademarks for Coca-Cola and similar variations, spanning multiple classes.
There are 45
total trademark classes. When you apply for a trademark application, you will indicate what goods and services your
trademark will represent. The trademark office will then compare your trademark
to similar trademarks and make a subjective decision as to whether your mark
and what it represents is likely to cause confusion with another mark and what
that mark represents. If the trademark office thinks there is no likelihood to
cause confusion, they will approve. otherwise, they will reject and you have an
opportunity to argue back for approval. There is no guarantee that a trademark
application will be approved as whether you are likely to cause confusion with
another mark is a subjective determination made by an examiner at the trademark
office. This is true even if nobody has the exact same name you are applying
for. The only way to get a trademark is to apply and wait for a decision by the
trademark office. To maximize your chances of approval, however, you should
apply for trademarks that are as different from existing trademarks as possible,
and list goods and services that are as different as possible from the goods
and services of existing trademarks. You also don’t get your money back if your
application is rejected or filed improperly, so best file it properly the first
time around.
