Trademark Class 41

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Trademark Class 41

Trademark Class 41 (IC-41) is one of the 45 trademark classes listed by the USPTO.  It covers a wide array of services.

Since Class 41 is one of the most popular trademark classes, a trademark search is more important than usual since you are more likely to run into conflicting trademarks when filing your trademark application at the U.S. Patent and Trademark Office.

What is Trademark Class 41?

When you file a trademark application with the USPTO, you must list at least one identifying class. This categorizes how a trademark will be used in the market. Trademark Class 41 is listed as Education and Entertainment Services. This means any brand that provides education or entertainment related services will fall into this class.

This classification is particularly broad, and this means it applies to a variety of industries. With over 40,000 yearly applications that include this category each year, Class 41 is included in nearly 10 percent of all trademark applications filed with the USPTO.  This popularity can be understood by looking at examples that fall into this group:

  • Classes provided in colleges.
  • Workshops hosted by industry experts.
  • Animal training schools.
  • Gymnastics courses.
  • Book publication.
  • Facility rental for sporting events.
  • Beauty contests.
  • Photography.
  • Magic acts.
  • Lotteries and other gambling activities.
  • Party planning.
  • Night Clubs.
  • Bookmobiles and library services.

This is just a small sampling of the activities that fall under Trademark Class 41. There are some services one might expect to fit into this category that do not. For example, some business services fall into Class 35 – Advertising and Business Services.

When seeking registration in Class 41, you’ll need to include more than just the trademark class identifier. Neither the number itself nor its short title will be sufficient when describing the services that your company is engaged in.

Class 41 only applies to services – not goods – but consider the following classes of goods that could be related:

  • Class 25 (Clothing): Will an entertainer offer related apparel for fans?
  • Class 28 (Toys and Sporting Goods): Sporting franchises could produce and sell memorabilia.
  • Class 3 (Cosmetics and Cleaning Preparations): A company offering cosmetology materials may have its own line of makeup.

These examples show that – while a specific class may be the most important classification for a brand  – it’s not necessarily the only applicable one.  If your trademark falls into multiple classes, include them in your application for the broadest protection.

The importance of registering multiple classes when appropriate relates to potential claims of infringement. Two brands can have very similar trademarks, but if they’re not for similar goods or services, it will be difficult to claim a likelihood of confusion among consumers. Failing to register under every appropriate class will reduce your ability to respond to potentially infringing activities.

Even if your research shows that Trademark Class 41 is the most appropriate registration category, make sure you review all trademark classes before submitting an application.

Nuances in the Trademark Search

Although not required by the USPTO, a thorough trademark search is one of the most vital aspects of registration. There are many nuances involved in clearance searches – such as using Boolean logic to detect similar identifiers – but you must be especially vigilant when seeking out similar trademarks to IC-41. The classification system could both help and harm your overall goal.

For instance, goods and services in different classes can still conflict. So if you were manufacturing eyeglasses (Class 9), your trademark may conflict with a retail store that sells eyeglasses (Class 44).

To account for these possibilities and other complexities in dealing with trademarks such as similar connotations, mis-spellings, etc, we strongly recommend that you have a trademark attorney do your search.  This will help you avoid potential refusal or even trademark litigation. If you have a strong trademark that doesn’t have many comparable counterparts in the market, you are less likely to run into an issue.

When it comes to disputes over trademarks, cases usually rest on whether confusion may occur. Sporting venues and magic shows both fall under Trademark Class 41, for instance, but consumers will probably never confuse a stadium with a magic brand. The wide array of industries that fall under this class make the search process particularly complex, so always make sure to perform your due diligence.

Trademark Class 41 Coordinated Classes

The [cc] field code used to identify similar categories in trademark searches refers to coordinated classes. This denotes classes of goods and services that are so often coexistent that the USPTO recognizes them as related. When classifying a brand that offers clothing (Class 25), for instance, the company is also likely to fall into the retail store services group (Class 35).

Trademark Class 41, for instance, is listed as a coordinating class for the categories Electrical and Scientific Apparatus (Class 9), Musical Instruments (Class 15), Paper Goods and Printed Matter (Class 16) and Toys and Sporting Goods (Class 28). These are all Classes of Goods. The majority of coordinating classes under IC-41, however, are other services.

The USPTO lists the following as coordinating classes for IC-41:

  • Class 35: Advertising and Business Services
  • Class 36: Insurance and Financial Services
  • Class 37: Construction and Repair Services
  • Class 38: Communication Services
  • Class 39: Transportation and Storage Services
  • Class 40: Material Treatment Services
  • Class 42: Computer, Scientific and Legal Services
  • Class 43: Hotels and Restaurants Services
  • Class 44: Medical, Beauty and Agricultural Services
  • Class 45: Personal Services

The USPTO now receives more than 450,000 trademark applications per year. Registering a trademark with multiple classes requires additional fees, but this is necessary to ensure full protection for a brand. Take care to include all categories your company falls under, but pay particular attention to coordinating classes.

Trademark Registration in Class 41

Any application to federally register your brand identifier must go through the Trademark Electronic Application System (TEAS). The process is generally the same for all applicants, but there are a few special considerations with trademark registration in Class 41.

Perform a Trademark Search

Performing a thorough trademark search is vital for any registration, but it’s especially important for a category as expansive as Trademark Class 41. Failing to identify a potentially confusing trademark – whether registered or not – can result in refusal of your application and forfeiture of the included fees.

Figure Out Additional Classes

Regardless of how many classes your trademark falls under, you typically need to submit only one application. The USPTO allows new classes to be listed if they existed in your original application but were misidentified. If your company begins providing an entirely new offering of products or services after you have already filed an application though, a new application to cover these goods or services must be filed.

Gather Information/Documentation

There are certain pieces of information and documentation that every trademark registration is required to include. Failure to do so will result in an Office Action or refusal of your application. Have the following ready before beginning your application online:

  • Name and address of trademark owner.
  • Nationality of owner and type of entity (e.g. corporation, individual, etc.).
  • An evidentiary trademark specimen (if none you can file on an Intent-to-Use basis).
  • Trademark’s date of first use.
  • Detailed description of the goods/services represented.

If you’re filing an Intent-to-Use Trademark application, you’ll need to include a sworn statement that you intend to use the trademark in commerce. Your evidentiary specimens will be submitted later as part of a statement of use once commercial use has occurred.

Choosing Trademark Class 41 Specimens

If you’re filing under Trademark Class 41, you’ll need to provide evidentiary specimens showing use. You won’t have any goods to present as proof of use, so you’ll need to submit something that shows the trademark being used in relation to the service offered. This typically includes promotional and marketing items.

Consider submitting photographs, scanned copies or screenshots of the following:

  • Your website offering the service.
  • Magazine or newspaper ads.
  • Billboards.
  • Flyers.
  • Brochures.

Each of these evidentiary specimens can be used to establish that sufficient use in commerce has taken place for trademarks in Class 41.

Avoid Common Mistakes

Many common errors are made when brand owners are submitting applications that include Trademark Class 41. These mistakes can hinder the registration process, cause your application to be refused, or even result in unchecked trademark infringement in the future.

  • Choosing the wrong class: Be careful when selecting appropriate classes and coordinating classes. These must be representative of the service you offer to consumers.
  • Selecting too many classes: Adding too many classes to your application will result in a broad search by the USPTO examining trademark attorney. This increases the odds of refusal.
  • Not selecting enough classes: If your service falls under more categories than just Trademark Class 41, failing to include them will weaken your rights.

Potential for Expansion

One of the biggest concerns when filing a trademark application is the potential for expansion. Just because your brand doesn’t currently fall under a certain class doesn’t mean that it never will. If a company that manufactures jewelry (Class 14) eventually decides to offer crafting classes for making necklaces, for instance, they will also be in Trademark Class 41.

Unfortunately, this can result in trademark litigation you never saw coming. A brand identifier that caused no initial confusion may suddenly infringe upon another property if the company expands into a new industry. This situation is what caused the record label company Apple Corps® and Apple Computer® to reach an agreement that neither would enter the other’s market.

You can only file in classes where you’ve already had commercial use or you have a bonafide intent to use. An applicant that has use in IC-41, for instance, cannot also file in Class 25 because they may one day begin producing clothing. If you have a bona fide intent to use the trademark in another class, though, you can file an application based on that intent.

Contact Us

If you need assistance with filing a trademark in Class 41, please contact us today.

 

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