An important part of protecting your business is protecting your intellectual property. When you decide to register a trademark, you need to make sure you know what you are applying to protect. The international trademark classes related to your good or service help clarify what trademark rights you are claiming.
International trademark classes are different categories of goods and services. When you register for a trademark, you have to explain what industry you are registering the mark for.
Basically, international trademark classes make it easier to figure out what industry you are seeking trademark protection in.
Unfortunately, you can’t register a mark without having a specific use in mind for it. Always wait to register a trademark after you have used it in interstate commerce, or when you truly intend to use the mark in commerce across state lines.
The Nice Agreement, named after the city in France, was created in 1957. It was later revised at Stockholm in 1967 and again in Geneva in 1977. It was finally amended one last time in 1979. The Nice Agreement establishes international trademark classes.
The Nice Agreement later created the Nice Classifications, or international trademark classes. There are 45 in all, so when you are registering for a mark, be sure you are using the correct classification.
The United States Patent and Trademark Office began using Nice Classification in 1973. When you are applying for a trademark even domestically in the United States, you will still be using international trademark classes.
As you’ve read, the Nice Classifications were created at the Nice Agreement in 1957. The Nice agreement is now administered by the World Intellectual Property Organization.
The World Intellectual Property Organization is a self-funded agency within the United Nations. Member-States make up the agency which administer treaties to protect intellectual property and creativity throughout the world. The WIPO now has 191 member-States.
Not all countries subscribe to the Nice Classifications. If you are registering a mark make sure you consider where you will need protections. For example, even though it is a member state of the WIPO, Canada does not use the same international trademark classes. In fact, they have their own organization called the Canadian Intellectual Property Office.
Depending on how you plan to expand your business, always consider the special trademark laws both in the United States as well as internationally.
There are 45 international trademark classes within the Nice Classifications. Goods make up 34 of the classes and services make up the other 11. Here are a few examples of each:
Class 1 is for chemicals used in industry, science, photography, agriculture, horticulture, and forestry. It includes unprocessed plastics, manures, fire extinguishing compositions, tempering and soldering preparations, chemical substances for preserving foodstuffs, tanning substances, and adhesives used in industry.
Class 2 includes paints, varnishes, and lacquers. It also includes any substances used as preservatives against rust or deterioration of wood; colorants; mordants; raw natural resins; and metals in foils and powder form for us in painting, decorating, printing, and art.
Class 35 protects advertising, business management and administration as well as office functions.
Class 36 protects insurance, financial, monetary, and real estate services.
For a complete list of all the international trademark classes, consult the WIPO website.
From these examples you may have noticed how complicated some of the classes are, especially for goods.
If you want to register a trademark, do thorough research with the USPTO and the WIPO to make sure you have the right class. When applying for a trademark, if you still aren’t sure of the class you should register in, that’s okay. It’s typical, and helpful, to hire a lawyer to help you make these decisions.
Classification of goods is especially tricky. Not only is the language sometimes hard to understand, but there are also exceptions in each class. For example, Class 33 protects alcoholic beverages, but not beers. So even though you might think to class beer with other alcoholic beverages in Class 33, it actually belongs in Class 32.
As you can see from the examples above, services are a little more straight forward. Just make sure you do your research and pick the right class for your service.
An important consideration when registering your trademark is the associated fees. The USPTO charges a fee for each international class that you register in. If you choose to register your trademark in multiple international classes, you will need to pay the fee for each classification.
Currently (01/03/2018), the USPTO charges $225 per international trademark classification. If you register a trademark in five different classifications (assuming you have a wide product line, for example), you would pay $1,125 in trademark filing fees.
Registering for a trademark is one important way to protect your business and intellectual property. When you decide to pursue formal registration for your brand name, consider your product line or service offerings. Recognize that your brand may mean something to a broad range of consumers. This is where international trademark classes come into play. Choose the trademark classes that make sense for your goods and services.
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LAWYER & ONLINE ENTREPRENEUR
After graduating from law school and passing the bar, I struggled to find work, pay my bills, and make ends meet. That's when I decided to take control of my future and start working for myself. Now, three years and several companies later, I'm sharing how I launched a successful business, and how you can do it too.