How to select a Trademark class

Before filing for registration of a trademark, it’s vital that you select the proper class under which your trademark is to be filed because filing a trademark in the wrong class can result in a rejection.

While applying for the trademark registration, you need to identify the accurate class of goods and services in which you want to seek the protection. For the purpose of registration, the goods and services classified into 45 classes.

• First 34 classes (1 to 34) deals with the specifications of goods
• Rest 11 classes (35 to 45) deals with the specifications of services

What are the things need to be taken into consideration while selecting a trademark class?

• Is it a good or service?

It should be clear whether the product is a Good or a Service. If the product is a Good, then it should be registered under Class 1 to Class 34, after looking at the list of terms given under the Nice Classification. If the product is a Service, then it should be registered under Class 35 to Class 45, with the aid of the List of Classes, the Explanatory Notes and the Alphabetical List given under the Nice Classification.

• Is trademark for company or a particular product/service?

The trademark serves as badge of the business whether it's protecting your business name/logo or any product of the company. But while selecting the trademark class, you must ensure that you are applying for the whole business (company name/logo) or particular product name/logo. Because it's not necessary that the classification for a particular product would be same as the classification you would use for the business as a whole.

• Are you actually use or intend to use the trademark for those goods or services?

Choosing a correct trademark class might be confusing at times, but all you need to remember is the goods or services you are using or intend to use in the future, not on the ones you using  way you use your trademark to market your product/service. For example, using your logo on a dress doesn't mean you should also list the shirts, pants or t-shirts just because these products also falling in the clothes category unless you genuinely have plan to sell them too.

• Is it a finished product or an ingredient?

This question can be another trap to hamper trademark registration process while selecting the accurate trademark classes for the goods or services. Always choose the class which describe the final product of your business, not the ingredients used for the final products. For example, if your final product is knitted sweaters then it should be falls in class 25 (Clothing) not in class 23 (Yarns and threads).

What if the products or services cannot be classified with the aid of the list of classes?

If a product cannot be classified with the aid of the List of Classes, the Explanatory Notes and the Alphabetical List, the following remarks set forth the criteria to be applied in case the product is a Good:

• A finished product is in principle classified according to its function or purpose. If the function or purpose of a finished product is not mentioned in any class heading, the finished product is classified by analogy with other comparable finished products, indicated in the Alphabetical List. If none is found, other subsidiary criteria, such as that of the material of which the product is made or its mode of operation, are applied.
• A finished product which is a multipurpose composite object (e.g., clocks incorporating radios) may be classified in all classe that correspond to any of its functions or intended purposes. If those functions or purposes are not mentioned in any class heading, other criteria, indicated under (a), above, are to be applied.
• Raw materials, unworked or semi-worked, are in principle classified according to the material of which they consist.
• Goods intended to form part of another product are in principle classified in the same class as that product only in cases where the same type of goods cannot normally be used for another purpose. In all other cases, the criterion indicated under (a), above, applies.
• When a product, whether finished or not, is classified according to the material of which it is made, and it is made of different materials, the product is in principle classified according to the material which predominates.
• Cases adapted to the product they are intended to contain are in principle classified in the same class as the product.

If a service cannot be classified with the aid of the List of Classes, the Explanatory Notes and the Alphabetical List, the following remarks set forth the criteria to be applied in case the product is a service:

• Services are in principle classified according to the branches of activities specified in the headings of the service classes and in their Explanatory Notes or, if not specified, by analogy with other comparable services indicated in the Alphabetical List.
• Rental services are in principle classified in the same classes as the services provided by means of the rented objects (e.g., Rental of telephones, covered by Class 38). Leasing services are analogous to rental services and therefore should be classified in the same way. However, hire- or lease-purchase financing is classified in Class 36 as a financial service.
• Services that provide advice, information or consultation are in principle classified in the same classes as the services that correspond to the subject matter of the advice, information or consultation, e.g., transportation consultancy (Class. 39), business management consultancy (Class. 35), financial consultancy (Class. 36), beauty consultancy (Class. 44). The rendering of the advice, information or consultancy by electronic means (e.g., telephone, computer) does not affect the classification of these services.
• Services rendered in the framework of franchising are in principle classified in the same class as the particular services provided by the franchisor (e.g., business advice relating to franchising (Class 35), financing services relating to franchising (Class 36), legal services relating to franchising (Class 45)).