When filing an application with the USPTO, you’ll need to explain how you use your mark – more specifically, what you use it with. Your mark is supposed to identify the source of certain goods/services. You’ll need to specify which goods/services. Additionally, you’ll need to put those goods/services in the correct class. The USPTO uses the Nice Classification System, a set of 45 classes of goods and services. There is a proper place within this system for anything you could imagine legally selling or doing under your mark; but common sense and intuition aren’t always enough to help you figure out where that place is.
Sometimes the correct class is determined by surprising things like material composition or subject matter. These 3 tips may help you sort things out.
(1) Look out for goods that are classified by material composition.
Sometimes goods are classified not just on the basis of what they are but also by what they’re made out of. You might think common goods like ladders, for example, would always be in the same class. But they’re not. If you use your mark with ladders, you’ll be in a different class if they’re made of metal (6) instead of rope (22) or wood or plastic (20). To further complicate matters, you may also have to take function into consideration. If you sell fire escape ladders, then they’re in Class 9, regardless of what they’re made from.
If you use your mark with goods that belong in more than one class due to their material composition, remember that the total amount of filing fees that you pay to the USPTO depends upon the total number of classes in which you identify goods/services. The way this breaks down in practice isn’t always “fair.” If you’re a sculptor working in a variety of media, it might surprise you to learn that your sculptures may belong in multiple classes depending on the medium: Class 21 if ceramics, Class 20 if wood, Class 19 if marble, Class 30 if ice, and Classes 6 or 14 if metal. Which class for which metal? Precious metals (silver, gold, etc.) will put you in Class 14, non-precious metals in 6. Sculptors may justifiably envy painters in this context: regardless of medium, paintings are always in Class 16.
(2) Look out for services that are classified by subject matter.
Sometimes services are classified not just on the basis of the nature of those services but also by their subject matter. Perhaps the most common example is consulting. It’s impossible to classify advisory-type services without knowing their subject matter. You’ll be in a different class if the subject matter of your consulting is marketing (35) rather than insurance (36) construction (37) or data security (42). Remember, if your services are classified by subject matter and the subject matter spans multiple classes, you’ll be paying a separate filing fee for each class.
(3) Look out for software.
Software is classified based on 2 things:
(a) type
and
(b) function.
First, is your software downloadable or recorded? (Think mobile apps or, a bit of a throw-back, software on discs.) Or is it non-downloadable? (Think cloud-based.)
Second, what does your software do?
If it’s downloadable or recorded, you’re in Class 9, regardless of function (you’ll still have to specify function, but it won’t change your class).
If it’s a non-downloadable game, you’re in Class 41.
If it’s non-downloadable with any other function, you’re in Class 42 (again, you’ll still have to specify function). Technically, if you find yourself in Class 41 or 42, you’re providing a service, specifically, the service of providing temporary use of non-downloadable software.
Sometimes this stuff is just easier to visualize:
This information was posted on October 29, 2020 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.