Trademark Search by Class: Everything You Need to Know
A trademark search by class can be a bit challenging because of the numerous trademark classes, some of which have misleading class names.3 min read
2. Wrong Trademark Class
3. Trademark Electronic Search System
4. Search by Class
5. Trademark Infringement
Updated November 23, 2020:
A trademark search by class can be a bit challenging because of the numerous trademark classes, some of which have misleading class names. However, it's possible to conduct a successful trademark search through the help of the database of the Trademark Electronic Search System (TESS) of the U.S. Patent and Trademark Office (USPTO).
Trademark Classes Overview
The trademark classification system of the USPTO categorizes all goods and services into a total of 45 trademark classes – 34 goods classes and 11 services classes. Some goods and services seem out of place considering the names of the trademark classes in which they're categorized. For instance, the meat, fish, and poultry class (class 29) is made up of the following:
- Jam (made of fruit pulp)
- Potato chips (another vegetable product)
The USPTO doesn't lump goods and services together in the same class. Therefore, a business that sells bags of coffee to retail shops is selling goods that are in class 30. However, if the business runs a coffee shop, it's providing services in class 43. On the other hand, if a business sells roasted beans in a coffee shop, it's selling goods and rendering services at the same time. Therefore, it needs to register under two classes - a goods class and a services class.
When applying for a trademark, a business has to choose a class of goods or services that the desired trademark should protect, and also pinpoint the goods or services it plans on providing. That's because the chosen trademark can only protect the goods and services in the class indicated in the trademark application.
Wrong Trademark Class
Choosing the wrong trademark class can result in a rejected trademark application by the trademark office without a refund of the registration fee. In other words, a wrong trademark class choice can potentially cost hundreds of dollars and several months of wasted time. Also, if your error in trademark class choice goes unnoticed and you successfully register a trademark in the wrong class, you could still be in trouble. After all, you could unknowingly be encroaching on the trademark rights of another business.
Again, when your error in the class choice is discovered, your registered trademark could be given to a competitor in the right class, and you'll never be able to get it back. Admitting your mistake in class choice after registration won't help. You won't be allowed to switch to the correct class after registration. You won't even be allowed to make changes to your indicated goods and services. You can only start the entire trademark registration process from scratch.
Trademark Electronic Search System
Getting the trademark registration process, including class choice, right is important but not easy. Therefore, carrying out a trademark search can help a business avoid undesirable registration mistakes and their attendant hassle. To do so, a business can use the USPTO's Trademark Electronic Search System (TESS).
Search by Class
You can search by class to retrieve a particular class and every other class related to it. For instance, if you're searching for wine, you should enter “033[CC],” which will fetch you class 033, where wine is categorized, and will also fetch other food classes that are related. You have to first study the USPTO's acceptable descriptions manual to acquaint yourself with all the available class codes before you can search by class.
A business shouldn't infringe on the trademark rights of another business, especially if the owner has federally registered his or her trademark. A violation of the trademark rights of another business will be considered intentional by the law, even if it's not true. Furthermore, the defaulter might have to compensate for the trademark holder's attorney fees and any other claimed damages.
Therefore, it's wise to check if a trademark is federally registered at the USPTO's site. Also, check the database of the home state of the trademark holder. Other alternatives can be websites that search for trademarks that are registered in the 50 states of the United States. An example is Thomson's SAEGIS service. This idea is especially helpful for searchers who are planning on running businesses in multiple states.
Trademark seekers are bound to find hundreds of trademarks that seem the same throughout the country, but they need to know how to filter through their results to tell which ones are protected by law.
If you need help with trademark search by class, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies such as Google, Menlo Ventures, and Airbnb.