A trademark class is a category in which a
trademark is put into. Each class covers certain similar goods or services
which the trademark covers. For example, class 25 covers clothing. If you apply
for a trademark and tell the trademark office that your trademark will be used
to represent shirts, for example, your trademark will be put into class 25. You
can potentially get a trademark for a name that someone already has a trademark
for, if you apply for a different class.
When you apply for a trademark, you need to tell the trademark
office what goods or services this trademark will represent. For Before reading
further, make sure you understand the basics of what a trademark is. You should
know what it means that a trademark acts as an identifier of source.
To get the 101 on trademarks, read What is a Trademark? first.
example, Coke will tell the trademark office that the Coca-Cola
trademark will be used to represent soft drinks. When people see Coca-Cola on
soft drinks, Coke wants people to know that the soft drink was made by
Coca-Cola. When approved, Coke’s trademark will prevent people from using the
Coca-Cola name on soft drinks, and anything that is similar to soft drinks.
This is because soft drinks was indicated on Coke’s trademark application. If
someone uses the name Coca-Cola on a completely unrelated product, bookshelves
for example, they may be able to do so since bookshelves are quite different
from soft drinks.
When the trademark office looked at Coke’s trademark application
for Coca-Cola, they put the trademark into class 32 which is the class for most
beverages. This is because when Coke applied for the trademark, they told the
trademark office the trademark will be used to represent soft drinks and the
trademark office knew to put the application into class 32. Now that they have
their trademark approved and put into class 32, the class can help others
determine how much protection the trademark covers. Generally speaking, if Coke
has a trademark in class 32, you likely cannot use their trademark with any
product that is also in class 32. For example, you likely cannot use Coca-Cola
to sell juices. Further, if you applied for the trademark Coca-Cola to try and
represent any product in class 32, such as juices for example, you likely will
be rejected. This is because Coke already has a trademark for Coca-Cola in
class 32, and you are trying to apply for the same name to represent goods in
the same class Coke already is in.
Generally speaking again, if you were to apply for the same name
in a different class, you may be able to get a trademark. Let’s look at an
example with the name “Dove”:
You can see above that there is a Dove soap and there is also a
Dove Chocolate, trademarks owned by two separate companies. The simple
explanation as to why they can both own trademarks for Dove is because they
have applied for trademarks in different classes. Dove owned by Mars is in
class 30 for chocolates, whereas Dove owned by Unilever is in class 3 for
soaps.
Related post: What are the benefits of Trademark
registration?
However, there is a longer explanation. The real reason that
both companies can each own a trademark for Dove is not necessarily because
they have applied for goods that are in different classes, but rather because
the trademark office believes that people buying Dove chocolate will not be
confused and think that the chocolate was made by the company that makes soap.
Vice versa, the trademark office believes that people buying Dove soap will not
think the soap was made by the company that makes chocolate. The key is that
the trademark office is convinced that there is no likelihood to cause
confusion by both companies each having the trademark for the name
Dove. In other words, the main reason Dove chocolate and Dove soap can both
exist is because the trademark office considers chocolate and soap different
enough that people will not be confused as to which company is making each. It
just so happens that chocolate and soap are in different classes, which is
usually true when two trademarks of the same name coexist, but not always.
Building on this concept, it is possible for two people to have
the same trademark and coexist in the same class. Conversely, it is possible to
apply for a trademark that already exists in one class, but file it in a
different class and get rejected. It all comes down to whether the trademark
office thinks the goods and services that are represented by the two marks are
likely to cause confusion with buyers. For example, Coke has a trademark
Coca-Cola for sodas in class 32. Tea drinks are actually part of a different
class, class 30 which is the class for tea and coffee. If you were to apply for
a trademark for Coca-Cola in class 30 for tea, do you think you would be
approved? The answer is likely not. Because tea and soft drinks are both
drinks, it is likely for buyers to be confused if you have a trademark for
Coca-Cola in class 30 and Coke has one for class 32. If you label your tea as
Coca-Cola, buyers will not be sure whether the tea was made by you, or by Coke,
and thus confused as to who made it. In this example, even though you are
applying in a different class than an existing trademark of the same name, you
are likely to be rejected. In an example of the reverse, if you are applying
for a mark in a class where another same mark already exists, you could still
get approved if you can convince the trademark office that the goods you are
selling are so different from the goods of the other mark in the same class
that there would be no confusion to buyers. However, this is generally
difficult since the trademark class system has been designed so that similar
products and services are put into the same class.
So let’s think strategy. Let’s say you start a company called
Widget and you will sell sodas and teas. You want to prevent others from also
selling sodas and teas by the name of Widget. Should you apply for sodas in
class 32 or teas in class 30? The answer, is for best protection you should
apply for both. If you have one trademark for sodas in class 32 and another for
teas in class 30, you ensure that both teas and sodas are covered. Filing in
both classes, however, requires double the fees. The trademark office charges
for each different class you file in. You may say well let me just file in
class 32 for sodas only, I should be fine since you said earlier if someone
else files for the same name in class 30 for teas they likely would be rejected
by the trademark office since teas and sodas are so similar. This may be true,
but do you want to risk it? If someone can make a convincing argument to the trademark
office that the teas they sell will not cause buyers to be confused with the
sodas you sell, they may get the trademark for teas in class 30. Therefore, to
be safe, the best way is to file for both class 32 and class 30, and pay double
the fees needed to do so. This is how the major corporations do it. They will
cover many classes to ensure that people cannot use their trademark name on
practically any good or service. As of this writing, Coke has 61 trademarks for
Coca-Cola and similar variations, spanning multiple classes.
There are 45
total trademark classes. When you apply for a trademark application, you will indicate what goods and services
your trademark will represent. The trademark office will then compare your
trademark to similar trademarks and make a subjective decision as to whether
your mark and what it represents is likely to cause confusion with another mark
and what that mark represents. If the trademark office thinks there is no
likelihood to cause confusion, they will approve. Otherwise, they will reject
and you have an opportunity to argue back for approval. There is no guarantee
that a trademark application will be approved as whether you are likely to
cause confusion with another mark is a subjective determination made by an
examiner at the trademark office. This is true even if nobody has the exact
same name you are applying for. The only way to get a trademark is to apply and
wait for a decision by the trademark office. To maximize your chances of
approval, however, you should apply for trademarks that are as different from
existing trademarks as possible, and list goods and services that are as
different as possible from the goods and services of existing trademarks. You
also don’t get your money back if your application is rejected or filed
improperly, so best file it properly the first time around.
Source: Quora
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