Trademark Class 42

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Trademark Class 42

Trademark Class 42 is one of the most utilized designations due to the number of potential services that qualify for this classification. The U.S. Patent and Trademark Office (USPTO) lists 45 separate categories that goods and services can fall into. You may see trademark Class 42 described as either Science and technology services or Computer and scientific services.  

Trademarks that fit into the Class 42 designation can be in industries ranging from healthcare to petroleum exploration.

What is Trademark Class 42?

Applicants that seek trademark registration with the USPTO must designate at least one category of goods or services that are associated with the trademark. Individuals or organizations that provide technological and scientific services are likely to fall under International Class 42. This is one of the internationally recognized designations created by the Nice Agreement.

When comparing classes, Class 42 offers some of the broadest descriptions.  Trademark applications in Class 42 account for nearly 10 percent all applications in recent years. The frequent use of this classification is understandable when looking at a few examples from the category:

• Medical research.
• Industrial analysis.
• Clinical trials.
• Server hosting.
• Calibration.
• Petroleum exploration analysis.
• Consultation for architecture, computer technology and energy savings.
• Computer software duplication.
• Pharmaceutical research.
• Any form of scientific research.
• Most commercial research.
• Testing oil wells.
• Web design.
• Big data storage.
• Urban planning agencies.
• Dress design services.

This list is far from exhaustive, but it shows just how wide ranging Trademark Class 42 can be. This means applicants must be descriptive when detailing how the trademark is going to be used in the marketplace. The International Class number and short title of the category will not be sufficient, and applications that include only these will receive an Office Action.

Class 42 is a class of services, but there are a variety of products that could be related. If your brand doesn’t deal in physical goods, you many not need to file in the trademark classes related to goods. The following examples are goods that are related to Class 42:

• Class 1 (Chemicals): Companies that perform substance analysis may also produce their own chemicals.
• Class 7 (Machinery): An oil well tester may manufacture custom machinery to perform the job.
• Class 10 (Medical apparatus): A medical research organization could produce testing kits for laboratories.
• Class 25 (Clothing): Dress designing companies may begin to produce their own apparel.

Each of these examples shows how important it is to consider all trademark classes prior to filing an application. Even if Class 42 describes the bulk of the services you provide, you need to file under each category your trademark will be used within. This can minimize the potential for future trademark litigation linked to competitors in adjacent markets.

What Doesn’t Qualify as Trademark Class 42?

While trademark class 42 is an extensive category of trademarks, it doesn’t encompass all occupations within the fields it focuses on. The confusion this creates partially explains why over 85 percent of reduced fee (RF) and traditional applications are not approved by USPTO examining trademark attorneys on their first actions.

The following are services that are similar to Trademark Class 42 but are not designated as such:

• Market research not focused on product development (Class 35).
• Computer and other technology repair services (Class 37).
• Extracting and processing oil or mined materials (Class 37).
• Veterinarian or medical treatment services (Class 44).
• Financial evaluations (Class 36).
• Business evaluations (Class 35).
• Computer installation (Class 37).
• Legal services (Class 45).
• Computer file and word processing management (Class 35).

Simply being related to science, technology and computer services does not necessarily mean that a trademark will fall into class 42. This fact and the potential for overlap make your pre-registration activities – particularly the trademark search – essential for avoiding hurdles.

Trademark Searches in Class 42

A basic trademark search can provide a wealth of information prior to filing your trademark registration. This is not required by the USPTO, but taking the step can help you rectify any problems that may exist in your application. Even quick searches performed through the Trademark Electronic Search System (TESS) can identify exact matches or clearly similar trademarks.

The basic word search in TESS allows for truncation so you can spot potential alternate spellings of your trademark (e.g. “PhoneTrac” instead of “PhoneTrak”). Unfortunately, this simple query isn’t capable of providing the information you need in a digestible format when searching for common words.  Also the class alone is never determinative of whether trademarks may conflict. A company that manufactures pharmaceuticals (Class 5), for instance, might not show up in a search that only covers class 42. If the trademark is identical to a pharmaceutical research firm, though, a likelihood of confusion may exist.

Because of this and other potential issues, it’s advisable to have a trademark lawyer perform a trademark search. This will help pinpoint conflicting brand identifiers both inside and external to your trademark class. Additionally, this is the most effective way to avoid possible disputes involving domain name registrations, business names, and common law trademarks.

Trademark Class 42 Coordinating Classes

When you utilize the [cc] trademark field code in your TESS search, you’re telling the system to check all coordinating classes. While it’s possible for overlap to exist between any USPTO categories, coordinating classes are those most commonly seen listed together in applications. Applicants that file in Class 42, for instance, very frequently request additional protection under Communication services in Class 38.

Class 42 is listed as a coordinating class for every other class except for Jewelry in class 14. For Class 42 the USPTO lists the following as coordinating classes for the Science and technology services distinction:

• 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 41: Education and Entertainment Services
• Class 43: Hotels and Restaurants Services
• Class 44: Medical, Beauty and Agricultural Services
• Class 45: Personal Services

The USPTO filing structure requires additional fees for every subsequent International Class you list on your application. This should never serve as a deterrent, however, for proper filing. While the initial investment is higher, it’s far more affordable than dealing with incidental trademark infringement that may arise from not fully protecting your trademark.

Trademark Registration in Class 42

Regardless of which category your trademark falls into, you’ll need to submit your application through the Trademark Electronic Application System (TEAS). While paper filings are accepted, this can greatly delay your application process. Prior to submitting your trademark registration in Class 42, there are several proactive steps you should take.

Do Not Forego a Trademark Search

By performing a trademark search, you could rectify potential issues prior to examination. This means you can avoid long delays, outright refusals and forfeited filing fees.

Include All Appropriate Classes

Some brand owners decide to file their trademarks in just one class – with intent to register the other categories later – in order to save money. This can present a variety of problematic issues. The riskiest potentiality is that a third party may attempt to register your trademark in a trademark class before you. Even if this doesn’t occur, though, your trademark is still not as strong as it could be.

If your trademark currently only qualifies as Trademark Class 42 – but is later used on alternate goods or services – you’ll have to submit an entirely new application. You cannot list classes based on a possibility that you may use the trademark in that class.  Instead, you must have a bona fide intent of use.

Prepare Information and Documentation

When filing your application with the USPTO, you’ll need to submit required information and documentation through the online portal. Regardless of your submission method, though, the following information and documentation is required:

• Name, address and contact information of trademark owner.
• Nationality of owner (foreign-based applicants need a U.S. attorney).
• Entity type (e.g. corporation, individual).
• Information on date of first use.
• Evidentiary specimen of use.
• Detailed description of the goods/services represented.

Commercial use is a cornerstone of federal registration. If you haven’t met the use in commerce requirement, though, you can still file an Intent-to-Use Trademark application. This can be done in instances where you have a bona fide intent to use your trademark commercially. Due to how quickly technology emerges in Trademark Class 42 industries, this is a common way of securing early rights.

Acceptable Class 42 Specimens

Trademark registration requires submission of a specimen of use showing the trademark used in relation to the services. This is typically a simple hurdle to clear with physical products since a photograph of the trademark on the product is sufficient. Because Trademark Class 42 falls under the service mark umbrella, though, you’ll need to show use in relation to the services.

The following are all acceptable examples of specimens of use in class 42:

• Company websites.
• Flyers
• Advertisements in magazines/newspapers.
• Digital advertisements (e.g. social media ads).
• Billboards.
• Storefront signage.
• Informational brochures.
• Direct mail advertisements.

These items themselves do not need to be submitted to the USPTO. Photographs, scanned images and screenshots of each specimen is acceptable. A specimen is required for every class you’re filing under. Ensure these accurately depict the brand identifier and how it is presented in the marketplace. Failure to do so can result in the loss of rights if the USPTO audits your registration.

Expansion into Other Classes

Growth in the market can result in an unforeseen negative issue for trademark owners: expansion into separate classes. This is a sign of positive growth, but it also creates the potential for incidental trademark infringement. Extending your brand’s reach into new industries means a once non-infringing trademark could become infringing.

This is a particular problem with Trademark Class 42 due to the expansive reach it has in the marketplace. A company that handles web design services (Class 42), for instance, may also offer web design classes (Class 41) to increase revenue. If this company shared a similar brand identifier with a private college that offered a web design program, though, a trademark dispute could arise.

The likelihood of this issue arising can be reduced by choosing a strong trademark from the start such as a fanciful trademark, arbitrary trademark or a suggestive trademark. Fanciful identifiers are less likely to conflict with another trademark, and third parties typically will not use them for fear of dilution claims. You can also file a new application based on intent to use if you plan on expanding into a new market in the near future.

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