Trademark Class 35
Trademarks are listed within a variety of categories at the USPTO, and among the most applied-for classifications is Trademark Class 35. This is one of the 45 categorizations created by the Nice Agreement in 1957 and recognized by the U.S. Patent and Trademark Office (USPTO).
The widespread use of this class in registrations is at least partially attributable to the scope of services covered. Advertising, human resources, business assistance and other professional services all fall under the class.
What is Trademark Class 35?
Every trademark application submitted for registration must at a minimum include one class from the Trademark ID Manual. These classes help the USPTO better distinguish between different types of usage, and they also simplify the registration process and make identifying potential infringement easier. The general category for class 35 is listed as Advertising and Business.
While the title of this category may seem straightforward, it encompasses a variety of services in every industry. The World Intellectual Property Organization (WIPO) defines the classification as any service provided that directly assists in the management or operation of separate industrial or commercial enterprises. This broad distinction could include any of the following:
- Firms that provide marketing services for businesses.
- Renting vending machines to office buildings.
- Providing bookkeeping services for a local business owner.
- Renting billboards out to entrepreneurs promoting their startup.
- Data compilation, transcription, entry, etc.
- Auctioneering or trade shows.
- Offering any type of consulting services for businesses.
- Conducting opinion polling on behalf of a manufacturer.
- Appointment scheduling services.
- Offering pre-employment background screenings.
This list of potential services that qualify as Trademark Class 35 is far from exhaustive. Countless activities could fall into this classification. That’s why the USPTO is now receiving over 50,000 applications yearly whose listed categories include class 35.
Services that further the goals of a business – even if they’re unarguably essential to its success – are not included in class 35 unless they directly relate to management or operation. Consider the following services that do not fall into Trademark Class 35:
- Transport services (Class 39).
- Telecommunications services (Class 38).
- Insurance services (Class 36).
- Training services (Class 41).
- Construction services (Class 37).
Many companies offer services that fall within multiple trademark classes. A business that provides marketing services to other brands and offers marketing training seminars would fit into Trademark Class 41 and Class 35. If the business also provides computer services, that would be Class 42.
If your brand does fall into multiple categories, don’t make the error of registering under only the most applicable class. This will make it easier for brands in similar fields to use your trademark without legal consequence. If your trademark is used for advertising and educational purposes, for instance, failing to register in either category will open the door for competitors in that industry to profit from your reputation.
Conducting a Trademark Search
A thorough trademark search is the best way to ensure that your trademark isn’t in use within potentially conflicting classes. It’s permissible for similar trademarks – or even exact duplicates – to exist if there’s enough distance between their spots in the market. It’s when a likelihood of confusion among consumers exists that problems can arise.
The Trademark Electronic Search System (TESS) is invaluable when registering any trademark, but this is especially the case when Class 35 is in question. Considering the many industries these services are provided within, it’s easy to understand how confusion could arise. Even if you’re not providing the exact services as another company, a likelihood of confusion could exist if both brands are within the same market space. Searches that include the Coordinated Class Field Code (i.e. [cc]) will minimize this likelihood.
TESS searches will not be enough to secure full trademark clearance. Common law trademarks, business names, domain names and other forms of use also may cause issues. Uses in different classes can also create a conflict. For example, a freight shipping service (Class 35) with the same name as a freight truck producer (Class 12) could cause confusion. This makes it advisable to hire a trademark attorney for the search.
Trademark Class 35 Coordinated Classes
There are many areas where cross-industry confusion may exist. Certain categorizations, however, are more frequently found together on trademark registrations. The USPTO has listed the most regularly connected groups as coordinating classes. Companies that produce clothing (Class 25), for instance, also frequently fall into Classes 24 (Fabrics) and 18 (Leather goods).
Trademark Class 35 is the only USPTO categorization that’s recognized as a coordinating class for every other classification. This explains why so many registrations include this designation.
Trademark Registration in Class 35
While the process can still be handled through the mail, it’s advisable to file for trademark registration in Class 35 via the USPTO platform. The Trademark Electronic Application System (TEAS) allows you to submit all documentation online and expedites the process. You should also be sure to do a trademark search. While a thorough clearance search isn’t required for trademark registration, there’s no scenario when conducting one isn’t advisable.
Due to large amount of applications received that list the Class 35 designation, there’s often a higher likelihood of conflicting identifiers. Catching these early on can help you avoid wasted time, forfeited application fees and even advertising the fact that you’ve unknowingly been engaged in trademark infringement.
Acceptable Trademark Class 35 Specimens
Your evidentiary trademark specimens will serve as proof that your identifiers have been used in commerce. For classes of goods, this can be as simple as a photograph of a logo featured on a product’s packaging. Since Trademark Class 35 and other service marks aren’t used on goods, however, it’s typically promotional and other marketing items that are submitted.
Each of the following are acceptable trademark specimens for Class 35 and other service classes:
- Ads placed in printed periodicals.
- Facebook ads or other digital promotions.
- Company brochures.
- Direct mail advertising.
- Storefront signage.
This is just a small sampling of specimens accepted by the USPTO for Trademark Class 35 applications. As long as your specimen proves that your brand identifier is being used sufficiently in commerce, it meets the requirement of proving your trademark qualifies for registration.
Avoid Delays Due to Mistakes
Thanks to Notices of Opposition and other common issues, the likelihood that your registration will be delayed already exists. There are many mistakes made by applicants, however, that are simply unnecessary. In a best-case scenario, these will slow down the application process. In some instances, though, it could increase the likelihood of future trademark litigation.
Avoid these issues at all costs.
- Selecting a class of goods: Many classes of services have similar classes of goods, but if you’re not providing products and don’t intend to, you should not file under Classes 1-34.
- Selecting the wrong class: The classes you choose in your application must represent the final version of the service you provide. You cannot choose a trademark class simply because it might one day apply.
- Listing too many services: While more services offered would provide a wider range of protection, it would also increase the likelihood of confusion. This means a more in-depth search by the USPTO examiner and increased potential for opposition.
- Listing too few classes: You should be selective in choosing which classes to file under, but if a trademark is in use in a class it should be included in the application.
Expanding into Separate Classes
Every budding entrepreneur hopes that their business will someday expand. In many instances, this type of expansion pushes their brand identifiers into other USPTO categories. If you offer auctioneering services to established companies, for instance, you fall under Trademark Class 35. If you then expand into offering classes on how to run an auction, though, you are working within Trademark Class 41.
There are several potential outcomes in these situations. It’s possible that no other brand is using a confusingly similar trademark in the new class, so you’ll only need to file a new application for additional protection. If there is preexisting use within the new class, however, the potential for legal complications and even trademark litigation increases.
For any issues related to protection in trademark class 35, please feel free to contact us today.