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Trademark Class 42 is a trademark class used by the United States Patent and Trademark Office (USPTO).6 min read
2. Why Is Trademark Class 42 Important?
3. Examples of Class 42 Specimens
4. Common Mistakes
5. What Are the Fields of Identification?
6. What Are the Trademark Classes?
7. What Are Services Rendered to Associations by Their Own Members?
8. Frequently Asked Questions
Updated October 30, 2020:
Trademark Class 42 is a trademark class used by the United States Patent and Trademark Office (USPTO). This category includes technical or scientific services in relation to the practical and theoretical aspects of complex fields. These services would include those provided by engineers, chemists, computer programmers, physicists, and similar occupations. Class 42 also includes services provided by engineers undertaking research, estimates, evaluations, and reports in the technological and scientific fields as well as scientific medical research purposes.
Trademark Class 42 services include but are not limited to:
- Architectural consultation or services
- Oil-field exploitation analysis
- Artwork authenticating
- Biological research
- Bacteriological research
- Chemical analysis and research
- Chemistry services
- Clinical trials
- Cloud computing and seeding
- Computer rental services
- Computer programming, system analysis, and design
- Computer virus protection services
- Computer technology consulting
- Construction drafting
- Computer design and development consultancy
- Energy-saving consultancy
- Data or document conversion services
- Cosmetic research
- Interior décor design
- Dress designing
- Computer program duplication
- Electronic data storage
- Graphic arts design
- Geological research and prospecting
- Handwriting analysis
- Computer hosting sites
- Industrial design
- IT consultancy
- Computer software installation
- Land surveying
- Computer software maintenance
- Computer system monitoring
- Off-site data backup
- Oil-field surveys
- Oil-well testing
- Packaging design
- Information technology outsourcing
- Physics research
- Quality control
- Quality evaluation of timber or wool
- Computer data recovery
- New product research and development services
- Environmental protection research
- Scientific information consultancy
- Scientific laboratory services
- Providing online search engines
- Server hosting
- Service software
- Industrial design styling
- Technical research
- Technical project studies
- Telecommunications consultancy
- Technological consultancy
- Textile testing
- Material testing
- Underwater exploration
- Computer software updating services
- Urban planning
- Weather forecasting
- Water analysis
- Web server rental services
- Website design consultancy
An example of a recognizable Class 42 trademark is iHeartRadio. This trademark is issued to Clear Channel Broadcasting, Inc., which provides an interactive website that allows users to manage, discover, and consolidate media content in the fields of radio and music.
Before registering in Class 42, consider any related or "coordinated" classes under which your mark might be categorized. These include:
- Business services
- Insurance and Finance Services (Class 36)
- Construction and Repair Services (Class 37)
- Telecommunications Services (Class 38)
- Shipping and Travel Services (Class 39)
- Material Treatment Services (Class 40)
- Education and Entertainment Services (Class 41)
- Food Services (Class 43)
- Medical and Vet Services (Class 44)
- Legal and Security Services (Class 45)
The USPTO considers coordinated classes to be those related to any other class. You may need to file in coordinated classes in addition to Class 42 depending on the trademark.
Why Is Trademark Class 42 Important?
Trademark registration is based on a class system due to the varied nature of things that can be trademarked. For each class of goods or services you can register, you're required to pay a separate registration fee.
For instance, if you are a developer applying for a trademark, you may want to register for Classes 9 and 42, which cover both downloadable software and the service the software provides. When doing this, you must pay two fees: one for Class 9 and one for Class 42. You must indicate the correct class when registering your trademark; otherwise, if you enter the wrong class, you'll have to start the application process over again.
Trademark registrations are restricted to the goods and services you already offer or plan to offer, which you must indicate based on the specimens (or proof) you submit or on an intent-to-use basis.
Class 42 is one of the most popular trademark classes for new applications. That means your trademark may face competition or tighter scrutiny. Other common classes include:
- Class 9 (Electrical and Scientific Apparatus): This includes computer software and electronics.
- Class 25 (Clothing): This includes clothing, footwear, and headgear.
- Class 35: (Advertising and Business Services): This includes advertising, business administration, and office functions
- Class 41 (Education and Entertainment): This includes publishing, teaching, and entertainment services.
Examples of Class 42 Specimens
A specimen is a means of providing proof of your goods or services to the USPTO. Since Class 42 consists of scientific and technological services rather than goods, you need to submit proof of your services on which the trademark is clearly visible. You can do this with:
- Copies of your marketing or advertising materials
- Photographs of your billboards
- Newspaper or magazine ads
- Screenshots of your website
Your letterhead or business cards may be used if your services are clearly stated on them. Also, if your service is represented in audio form, such as on radio ads, you can submit a sound file as proof.
The following are unacceptable specimens for Class 42 services:
- Packing slips
- Documents showing the trademark rather than service mark usage, which indicate a connection to goods rather than services
- Business cards or letterhead only bearing the mark and company name with no reference to services
- Not considering every aspect of your goods or services
In the case of an app developer, you can file both a Class 9 and Class 42 because you're trying to trademark both software and the service that software provides. However, many developers find it difficult to afford registration for multiple classes. Even so, you should always consider every aspect of your product or service so you can register with the primary class or any relevant classes as you see fit.
- Registering under the wrong class
Many people choose the wrong class when filing their trademark application. Doing so can cause a delay in receiving your trademark registration. Be sure to take the time to do your research and classify your trademark correctly. If you're still not sure where your trademark fits, consult a trademark attorney.
- Filing under the wrong name
This mistake happens more often than you may think. Entrepreneurs often try to register a trademark before completing their corporate paperwork, or they've already completed the required paperwork but register the trademark in their personal name. These situations result in a voided application, and you must start over again and pay a new application fee.
- Listing too many goods or services
You want to be detailed about your services when filling out a Class 42 trademark application, but listing too many will result in denial. This is because a broad range of services can almost always be broken up into different classes, which require additional fees.
- Choosing a poor trademark name
Picking the right trademark name is essential. If you choose a bad one, your trademark application will be rejected.
- Failing to respond to office actions
Office actions are requests by the trademark office for additional information or clarification. You have six months to respond to an office action before your application is abandoned. If you fail to respond on time, you'll have to start the process again.
What Are the Fields of Identification?
Individuals who provide information "in a wide variety of fields" can apply for trademark protection provided they can prove they actually do so to examining attorneys. This means you must indicate fields of identification for your services.
When you submit your application, list the various fields in which you provide services in their order of importance. This must be listed separately and bundling similar fields into one item is not acceptable.
This is especially important if you provide website or information services, which are categorized based on subject matter rather than as a separate industry. You must thus provide enough clarity to ensure correct classification.
What Are the Trademark Classes?
The USPTO has relied on the same standardized categories of goods and services since September 1, 1973. Most other nations use this same list, too. The Nice Agreement outlines the categories in the International Trademark Classification System. Also known as the Nice Classification (NCL), it includes 45 general categories, with 34 goods categories and 11 services categories.
While a category once existed for services that cannot be classified elsewhere, today a service must be precisely described and categorized to qualify for trademark protection.
What Are Services Rendered to Associations by Their Own Members?
Class 42 once used this language primarily for services provided to an association or group by one of its members, provided the services do not fall into a different class. This generally only covered lobbying and similar activities, which today are categorized in Class 35.
Frequently Asked Questions
- How do I file a Class 42 trademark?
Navigate to the USPTO website and file your trademark application forms online.
- How do I determine if my trademark falls under Class 9 or Class 42?
Classes 9 and 42 are similar enough that they're often confused. Class 9 refers to electrical and scientific apparatuses. These can include instruments related to surveying, weighing, photography, signaling, checking, lifesaving, teaching, cinematography, and nautical applications. Class 42 denotes services related to some of these industries, but the difference is that Class 42 is strictly about services, research, and design, not apparatuses. If you develop an app, for example, the trademark would fall under Class 42.
Class 42 DOES NOT include:
- Oil and mining extraction
- Computer file management or word processing services
- Business evaluations and research
- Fiscal and financial evaluations
- Computer hardware installation and repair services
- Medical treatment services
- Service provided by those in the medical profession
- Garden and landscape design
- Legal services
If you need help determining which class your trademark falls under, or if you would like to hire a lawyer to file for you, post your job on UpCounsel's marketplace. Our lawyers are from top schools such as Yale Law and Harvard Law with an average of 14 years of legal experience.