Trademark Class 9
Trademark Class 9 is one of the 45 separate classes of goods and services utilized by the U.S Patent and Trademark Office (USPTO). When the Nice Agreement was ratified in 1957, this became an international class (IC) recognized by all parties to the agreement. While some other classes are used more frequently, Class 9 is still included on over 5 percent of all applications.
Anything from lifesaving devices to scientific equipment can fall under Trademark Class 9.
What is Trademark Class 9?
Brand owners seeking trademark registration must do so under at least one international class. All 45 categories can be found in the Trademark ID Manual. Each designation has a shortened title – such as Electrical and Scientific Apparatus for Class 9. Such designations make it easier for the USPTO to identify potential for consumer confusion.
Every trademark class recognized by the USPTO has several accepted descriptions that fall under the category. Trademark Class 9 is one of the most extensive – featuring over 3,100 descriptions. The World Intellectual Property Organization (WIPO) states that five general areas of goods fall into this designation.
These include the following:
- Information technology/audio visual equipment.
- Instruments and apparatus for research or scientific purposes.
- Optical instruments and apparatus.
- Safety equipment.
- Devices and apparatus for controlling electricity.
Safety equipment may seem out of place in this trademark class, but since these products can prevent serious injuries linked to accidents, they qualify as a scientific apparatus. This applies to safety equipment used in laboratories, and even helmets worn during sporting events will qualify. Similar items – such as knee pads for sports – wouldn’t fit the category since they’re not “life-saving.”
The biggest issues that may arise with Class 9 relate to products that are similar but perform different functions. A company that manufactures robots, for instance, could fall into multiple classes. Robots that are humanoid or feature artificial intelligence, security surveillance, laboratory capabilities or serve teaching functions would all fall under Class 9. Surgical, toy and industrial bots, however, would not.
The five general areas of goods classified under Trademark Class 9 by WIPO include a wide range of products. The following are just a small sampling:
- Battery chargers.
- Bass amplifiers.
- Contact lens cases.
- Computer operating software.
- DNA chips.
- Memory modules.
- Metal detectors.
- Zenith telescopes.
- 3D scanners.
- 35mm cameras.
- Video disc players.
- Video cables.
- Vibration meters.
The USPTO now receives over 55,000 yearly applications for products that fall into Class 9. Brand owners may delay the trademark registration process by listing products that seemingly fit into Trademark Class 9 but in actuality do not. Consider the following products along with their appropriate designations:
- MRI apparatus: If used for medical purposes, it falls into Class 10.
- Non-downloadable digital goods provision: Qualifies as a service under Trademark Class 41 even though many downloadable digital goods are Class 9.
- Online retail environment: Providing digital goods in an online retail environment setting qualifies as Class 35.
It’s possible for these examples – and the long list of Trademark Class 9 descriptions – to fall into multiple categories. MRI machines, for instance, are sometimes used by commercial drilling companies for imaging samples. If a manufacturer produces machines that can be used for this and medical purposes, a trademark application should include Class 9 and Class 10.
If you can show that the final version of your product received by consumers falls into multiple categories, it’s advisable to always concurrently file in all classes. This will increase the level of protection your registration offers by making it more difficult for third parties to use your trademark in related industries.
Importance of Trademark Searches
While the USPTO does not require a trademark search, doing a search is always a good idea. This will identify other prior or pending registrations that could cause a likelihood of confusion. By spotting these early in the process, it’s possible to avoid a problem before it starts. This could also help avoid wasting resources seeking a registration that has a low chance of approval.
The Trademark Electronic Search System (TESS) allows users to perform free searches on the USPTO database, but it can be difficult for non-attorneys to identify all potential conflicts. This is especially the case with Trademark Class 9 products since brands can be within completely different industries but still fall under the same class (e.g. cell phone covers vs false coin detectors).
While your trademark search should also include domain registrations, business directories, common law trademarks and more, the following steps in TESS are a good start:
- On the main search page of the USPTO, select “Basic Word Mark Search”
- Type your trademark into the search area or use the Design Search Code
- Click “Submit Query.”
While a basic word search may be enough if you’ve chosen a fanciful trademark, you will likely run into too many results for descriptive trademarks. While TESS searches may be sufficient as a starting point, they shouldn’t be relied on to clear trademark rights. This is partly because a trademark lawyer is much more likely to find conflicting trademarks, and partly because trademark rights can exist outside of the federal system. Common law trademarks can establish trademark protection, so a thorough search completed by a professional is advisable.
Class 9 Coordinated Classes
Due to the extensive list of products that can fall into Class 9, it’s possible that brands within this category could fall into any other trademark classes. A company that manufacturers baseball helmets (Trademark Class 9), for instance, may also produce leather wallets featuring team mascots (Class 18). This brand should file under both classes.
There are certain categories that the USPTO so frequently sees connected, though, that they’re known as coordinated classes. The following are all considered coordinated classes for Class 9:
- Medical apparatus (Class 10).
- Paper goods and printed matter (Class 16).
- Toys and sporting goods (Class 28).
- Advertising and business services (Class 35).
- Communication services (Class 38).
- Education and entertainment services (Class 41).
- Computer, scientific and legal services (Class 42).
- Medical, beauty and agricultural services (Class 44).
It is not uncommon for coordinating classes to frequently be seen together on multi-class applications. Collective membership marks and certification marks are also considered coordinating classes for Class 9.
Trademark Registration in Class 9
The steps for trademark registration in Class 9 are very similar to those of other categories. You’ll need to visit the Trademark Electronic Application System (TEAS) to submit your request. Users also have to provide their application fee along with information that meets the minimal filing requirements.
Following the instructions outlined above to conduct a trademark search should be your first step for registering under Trademark Class 9. The sheer number of applications filed under this category increases the likelihood that potential confusion could exist. A thorough search will help you avoid this.
The only way to secure full protection for your trademark is to file under all applicable trademark classes. Failure to do so creates the potential that a competitor could profit from your registration. And while the costs will increase as additional classes are added, this is a small investment relative to the protection that’s provided. Start by reviewing all coordinated classes for Trademark Class 9. Remember that it’s possible for a company to provide both goods and services, so consider the Classes of Services available as well.
If you haven’t yet used your brand identifier in commerce but still want protection, consider filing an Intent-to-Use Trademark application. This can not be done simply to reserve a trademark. You must have a bona fide intent to use the identifier in commerce. Additionally, you must file either a Statement of Use or an extension request within six months of approval.
Trademark Class 9 Specimens
Your evidentiary trademark specimens are what will prove to the USPTO examining attorneys that your trademark is being used in commerce. For service marks, this could be as simple as screenshot of a website. Since Trademark Class 9 is a class of goods, however, you’ll typically need to show the trademark on the product or packaging.
The following are just a few examples of acceptable specimens for Class 9:
- Photograph the trademark printed directly on your product.
- Photograph of your identifier featured on a tag or label of product.
- Photograph of product packaging featuring the trademark.
- Screenshot of webpage featuring the trademark and product with the ability to add it to a cart.
- Photograph of sales display featuring trademark.
The images will be directly uploaded with your application on the TEAS platform. There are many evidentiary specimens you can use, but make sure they’re effective at showing commercial use. Mock-ups, press releases and specimens that don’t associate the trademark with the product will not be accepted.
If you are interested in filing a trademark application in Class 9, please feel free to contact us at any time.