Picking the right trade mark class or classes for your product or service is critical.
Get it wrong, and you will compromise the integrity of your most valuable asset. However, that doesn’t mean you should register it in umpteen classes ‘just to be on the safe side.’
Avoid becoming a Trade Mark Troll
To ‘troll’ is to register your trade mark with such a broad specification that it covers goods and services that you don’t intend to market. In effect, this is trade mark squatting.
Even if this wasn’t your intention, and was just a side-effect of picking the wrong classes, it’s something you must avoid at all costs. That’s why it’s essential you get the right advice when choosing trade mark classes.
What are trade mark classes?
A trade mark classification system is used by Intellectual Property Offices worldwide. It groups similar goods or services into 45 different classes.
- Classes 1 to 34 cover goods
- Classes 35 to 45 cover services
Each class has a broad heading (e.g. class 25 covers clothing, footwear, and headgear, and class 35 is Advertising; business management; business administration; office functions).
The idea behind it is to prevent someone from registering the same or similar trade mark within the same class. However, it doesn’t stop someone registering a similar one in a different class. That’s why your choice of class or classes is crucial.
Choosing the right class or classes
This is the tricky bit.
To start with, create a full description of the goods or services you want to trade mark.
It’s also important to think about how you’re likely to expand your brand over time. A registered trade mark lasts for ten years, so registering now could save you a lot of hassle in the future.
However, it’s worth noting that if you don’t use the trade mark within five years, it can be revoked.
Returning to the matter in hand, to work out which category or categories to use, you need to consider everything from the function and purpose of your product or service to the raw materials used and the activities involved in the service.
However, that doesn’t mean you should make it so broad that it covers things you have no intention of selling. As we’ve already discussed this could result in you becoming an inadvertent trade mark squatter. Also, it could also result in lost money due to rejected registrations and open you up to possible claims for non-use of a trade mark.
Should you go DIY or get professional help?
Can you register your trade mark yourself?
Yes, you can.
However, considering the complexities involved in choosing the right class or classes, it’s always best (and the safest option) to use a professional trade mark attorney.
The last thing you want is to open yourself up to unnecessary costs or to run the risk of not comprehensively protecting your brand.
A trade mark attorney will work with you to explore every aspect of your product or service to ensure registration in every relevant category. They will also make sure your applications are filed correctly because the last thing you want is a delay due to an incorrectly completed form.
One simple mistake can make your brand vulnerable. You’ve spent a lot of time and money building it, so protecting it should be your number one priority. That’s why it’s important not to take any chances.
To make sure your trade mark application is properly specified with the right choice of trade mark classes: