Classification in the USA
I started working with trademarks in 2015 and this was a truly mind-blowing experience. All my concepts about trademarks, patents and how they work were completely incorrect. The most challenging for me was understanding product descriptions and classifications, it’s something you can’t find a good analogy to anywhere else. I will do my best to keep this guide to trademark classification as easy and as simple as possible, keeping in mind how difficult classification appeared to me when I was getting familiar with trademarks and Intellectual Property.
The story goes like this: once there was a time when there was no classification system anywhere. You wanted to use a brand, you just used it, someone else then used a similar name and you had a judge to decide if the marks were similar. But what if the marks were similar but the products were not so much? What if you were selling something cool like medieval armor and the other seller was selling bread or pastry? How would you decide if there is a conflict?
The need for classification arose from a necessity to systemize chaos. Initially, all products and then all services were divided into groups based on their similarity. To make it simple, all food went to one group, all armor went to another group and the government decided that those groups were not similar. As the groups are not similar, two identical marks can coexist in different groups, as this coexistence creates no likelihood of confusion.
Then, every country wanted its own Classification and we had chaos again. Every country had its own number of classes and within the classes, they had their own terms. But then, some countries agreed to recognize one unified International Classification, called the Nice Classification. It happened in the city of Nice and they agreed to have one unified list of terms and accept the items from this list.
But some countries still stick to their original classification or came up with a new version. The USA partially accepts the Nice classification, partially, it doesn’t accept the Classification and uses its own terms instead. The Official US Classification is maintained by the USPTO, so I will call it the USPTO Classification.
Go on to learn why it is important.
I wrote the text above not just to overwhelm the reader but to give some context. Picking the correct items helps to lower the total price and make the registration process straightforward. Picking incorrect items, on the other hand, makes the trademark registration process expensive, lengthy and unpredictable.
All products and services are divided into 45 classes. You can file the mark in as many classes as you wish. There is a fee per additional class.
Let’s start from the basics, shall we? When filing a mark you must specify the products or services the mark will be associated with. Coca-Cola is for soft sugary drinks; Apple for computers; Audi for cars. The name of the product or service is called “an item” and the total list of items associated with a mark is “a description of the products or services” or shortly “a description”. The description can be standard and not non-standard. A standard item can be found in the Official USPTO Classification. A non-standard item can’t be found in the Official USPTO Classification.
A standard item must be completely identical to the item listed in the Official USPTO Classification. Adding anything or changing words will result in a standard description becoming a non-standard description.
A non-standard item can be anything you like. Instead of using Soft Drinks (standard), you can use sparkling drinks (non-standard). While the common sense tells you they are almost the same, from the point of view of the USPTO, those are 2 different things.
💵 To begin with, using a non-standard item will result in higher official fees. In the USA, you will need to pay US$100 extra per class if your description is non-standard.
But wait, there is more.
Non-standard items mean longer examination times and lower registration probability. If your mark has a non-standard description, a USPTO examiner will check every item to make sure that it’s correct and should be in the class you paid for. There is always a probability, no matter how good your description is, that the examiner objects to it, which will lead to more costs and more time spent.
When it is possible, you should ALWAYS keep your description standard. There will be situations when Bonamark’s employees or attorneys will recommend using a non-standard description and there are situations when it is beneficial to you. But in the majority of the cases, a standard description equals less time and money spent.
NOTE! Once your mark is filed, you can’t add anything to the description of goods or services. You can only delete or limit items, but you can’t add anything new. You can change Soft Drinks to Soft Drinks containing caffeine, but not the other way around.
Picking the correct items is something you can do yourself. The process is the following:
Below I will explain HOW exactly you can do this.
Determining the class for your mark:
The Classification includes 34 classes for products and 11 classes for services (this is true for almost every country). Each class has something called a heading. It briefly describes the content of the class. An example is below:
Class 8: Hand tools and implements, hand-operated; Cutlery; Side arms, except firearms; Razors
The purpose of the header is to determine the correct class or classes for your products or services.
The headers are available here: https://euipo.europa.eu/ec2/classheadings/?niceClassLang=en
As the first step, you must determine the class or classes. You can ask Bonamark to help with this.
If you can’t find the correct class or are not sure about the classes, I suggest that you check the trademarks of companies offering similar products or services. This is a great way to find classes worth protecting. For example, did you know that if you have an online version of your application, you should file your mark in class 42 as well as class 9?
Choosing the correct items can be difficult, but no worries, I am here to help. Google “USPTO Trademark ID Manual” (I am not giving the link as they frequently change URLs).
That’s what you need to find:
Here, you need to search for the name of your products. Let’s say I am a company manufacturing phone cases. How would I search for this?
Well, this is quite straightforward.
Let’s check if we can find out the product by searching for it in the official USPTO Classification. That’s what I found:
there are no “phone cases” but there are cell phone cases and cases for mobile phones. When coming up with the final description the items must be exactly the same as in the classification.
How many items to choose? I recommend choosing 5 to 7 items. In my experience, this is the sweet spot when your description covers all the products you sell but is not too long. The USPTO does not like long descriptions and if you have more than 30 items you should stop and seriously consider if you have abundant items in the description. Note, the USPTO might ask you to provide evidence that you actually sell each of the items in your description and even if you do, this can be a time-consuming task.
Sometimes one or two items are just enough. If you can’t find the correct items, you can always ask Bonamark to help you by checking the items you found or suggesting additional terms.
OK, here is the unpopular opinion you won't hear from a real trademark attorney. No, really, you can be banished from every attorney association. Luckily, I am not an attorney in the USA and can tell you the truth. ChatGPT can pick up a class for you faster than any attorney based on your vague description of what you sell. It can't do it as accurately as a real attorney, though, nor is it a substitute for an attorney. But that's a great starting point.
During an interview:
- I'm very fast at math.
- OK, what is 39 times 29?
- But that's wrong!
- Yes, but it was fast!
Jokes aside, you can try it for yourself, BUT always check it after with an attorney. Do not rely on ChatGPT for picking standard items from the classes. It makes a lot of errors, at least currently in 2023. I used it for finding out classes for filing in the EU when a client dumped a very vague 1-page explanation of his business on me. I was able to filter through the list of classes provided by ChatGPT, as many of the classes offered were not crucial for the client. Nonetheless, with a shorter description, you can get better results.
Here is an example:
|After finishing this article I received a lot of feedback for attorneys and paralegals. Many of them claim that ChatGPT is not ideal for this task and can't match a real professional. Well, I can't argue with that. Additionally, many of them informed me of frequent errors made by ChatGPT in classifying goods and services as well as determining classes. Therefore, use it at your own risk. My opinion that it's a good tool to simplify the process for attorneys, paralegals and IP professionals. But it might be the case that it's not ready for regular users. If you want to share your experience, contact us at [email protected]|
My recommendation here is the following: start with general items and add more specific items until you find one describing your product/service in maximum detail.
An example is below:
Let’s say you sell electric mountain bikes. So you want to start with something very general, like “Bicycles”. This will cover all types of bikes and will be beneficial for you as if in the future you decide to sell non-electric bikes, you won’t have to refile your mark. The target here is to keep the description as general as legally possible.
Then, go to more specific items: “Electric bicycles”, “Mountain bicycles”. This covers the exact products you sell (all types of electric bikes and all types of mountain bicycles). This is a simple example, but I want to show that those 3 items cover all types of bikes and leave just enough space for you to use your mark on non-electric bikes and non-mountain bicycles.
If you went for just electric bikes (1 item), using the R sign on regular bikes would be illegal. If you decided to go for mountain bicycles only, you wouldn’t be able to use the R on non-mountain bicycles.
Remember: a few general items + more specific items. The ideal number is 5-7 items per class.
What would be incorrect is to claim a very specific item you don’t sell. For example, “Folding electric bicycles” if your bicycles are not folding. If you add them to your description and claim actual use, this would be illegal and might result in problems with the USPTO.
Remember: if you claim actual use in the USA, you can add only the items you actually sell.
Sometimes you have to use non-standard items. For example, when your products or services are so unique and novel that they were not added to the Classification. Also, if you sell software, you will probably have to use non-standard descriptions to properly describe your software.
If you use non-standard items, not only will you pay more, there is a risk that the USPTO will have you change the description to correspond with their guidelines. Even the best attorneys sometimes have to respond to such requests, because the examiners might have their own view on how an acceptable description should look.
Here are our recommendations:
Alternatively, contact us to help you to choose the ideal description for you. Just keep in mind, that there is always a small refusal risk if you use a non-standard description. An experienced professional can lower the risk. In any case, even if there is an objection from the USPTO, you always will have a chance to change the description.
Bonamark.com started in 2016 and since then has serviced 7000 businesses. We helped these businesses to register their marks, copyrights, patents, conduct international trademark searches, fend off infringers, and reclaim Amazon listings. We helped companies ranging from a producer of coconut oil from Papua New Guinea to a world-famous language-studying platform from the US.
No matter where you are or what your business is. If you want to hire a professional team to protect your intellectual property, our consultants will be happy to help you.
Contact us at [email protected], and we will be there to answer any questions you might have.
Author: Vladimir Isaev is one of the founders of Bonamark.com. The entire article is based on his extensive experience in trademarks.