Choose relevant trademark classes
When filing for trademark registration, the application must include the description of classes of goods and services which will be associated with and protected by the trademark. There are 45 categories of goods and services to choose from. Classes 1 through 34 cover goods, and classes 35 through 45 cover services. It's important you choose the correct class and terms, as your trademark will only be protected for the goods and/or services you select in your application.
If you intend to use your trademark on your own clothing line, you would choose class 25 (clothing, footwear and headgear). If you intend to use the trade mark in a shop that sells other people's products, you'd choose class 35 (Advertising; business management; business administration; office functions) and select the term 'Retail services in relation to clothing.
Having trouble establishing what classes are applicable to certain products and services, we have another article that explains the process in greater detail: How to choose the right classes of goods and services when registering a trademark?
Use appropriate language
The language used for the description of goods and services in the trademark application should be that which could be understood by the average person, not having an in-depth knowledge of the relevant field. Suppose terms of art of a particular field or industry are used in the description, and the general population does not understand those terms. In that case, the application should include an explanation of the specialized terminology.
The applicant should avoid using trademark names in the description of goods and services. If the product is designed to work with a particular other product, it is better to describe the other product generally rather than referring to it by its brand name. For example, instead of saying “telecommunications instruments for Apple devices”, the description should be “telecommunications instruments for mobile devices”.
Plan ahead
When registering a trademark, an applicant should always think about their brand's future. Are you planning to introduce any new products or services within five years of your trademark application? If the answer is a firm yes, consider including them in the application. While it is good to think through a future list of offerings, it is also better not to be too overambitious. Successful trademark registration requires that all of the goods and services listed in the application must be actively used in commerce, meaning the business must be offering them to customers or clients. The inclusion of goods/services on which the trademark is not used within five years then can result in unnecessary costly legal action later. On top of that, if your application contains false or misleading descriptions of goods and services, your company risks having its trademark revoked.
Avoid unnecessary work
Choosing the wrong classes or providing an insufficient description of goods and services can result in wasted registration. The applicant indicates a number of classes to be covered by the trademark, and once the application is submitted, it is no longer possible to add any extra classes. If you happen to forget to add a class, the only option would be to submit another application for the same trademark for the full price. There are some acceptable amendments applicants can make to an existing application, such as narrowing down the list of products and services, taking some items out, and clarifying information that’s already on the application.
If you do not know the class of your goods or services, you can use the TMclass search tool to help you find and classify your goods and services, or you can contact us and get professional advice from our legal experts.
