Trademark Classes and Their Uses: The Complete Guide

What are international trademarks?

There is no true “international trademark” that will guarantee protection in every country. It’s up to you (or your lawyer) to check the trademark registration process and laws in each country where you intend to do business.

However, the Madrid Protocol does enable U.S. trademark owners to apply for international trademark registration with the International Bureau of the World Intellectual Property Organization (WIPO). The WIPO can forward the application to be reviewed by trademark offices in over 131 countries. Approval of the application is up to each individual trademark office. 

The Nice agreement, named for a committee of experts in Nice, France, lists the classifications for international trademarks. They are published in the World Intellectual Property Organization's Nice Classification Publication.

If you are a U.S. trademark owner and intend to sell products to other countries online or provide services internationally, it’s worth checking the USPTO’s Outbound Madrid Protocol applicants page to find out more about the international trademark registration process. 

Why trademark classes matter

When the USPTO reviews your trademark registration application, it will examine your descriptions and compare them to those of other trademark applications and registrations to identify potential conflicts. It will look at the class or classes you choose and make sure they accurately represent your goods or services. 

Clearly labeling your goods or services helps customers to identify what you’re selling—and keep the USPTO from rejecting your application. 

“Clients get really hung up on classes," William Scott Goldman of the Goldman Law Group says. “There tends to be a huge disconnect with this issue." Goldman has more than 30 years of trademark experience and almost 20,000 successful USPTO filings. “Type in 'goods and services' [on the USPTO website], and the class is in there," he explains.

Finding the correct classifications for the trademark will give the business owner more legal protection.

For non-legal experts who can't afford an attorney or prefer not to hire one, the trademark experience can be a little daunting, says Leigh Coggiola-Belza, the CEO of Leaxy and Breast Leak Leisurewear. She has two registered trademarks: Leaxy, which she filed on her own, then hired a trademark attorney, and Breast Leak Leisurewear, which she registered herself.

“Determining the classification was one of the hardest parts, in terms of ensuring that everything our brand/trademark may possibly look to cover in the future was covered," Coggiola-Belza says.

"'Goods and services' was the hardest, especially in the early stages of creating a company," she explains. “You're still ironing out the details of everything your brand will offer to consumers, but it definitely helped me think about the bigger picture."

While identifying a trademark class may be more straightforward than other aspects of the trademark process for some, 50% of applications are kicked back to the business owner for more information, according to Goldman. For individuals doing it on their own, the rate is 75%. When you work with LegalZoom, attorney support from start to finish gives you a better chance for success.

Determining how goods and services are classified is an essential part of the trademark process, which business owners can tackle themselves or hire an attorney who specializes in trademarks to help with.

Understanding U.S. trademark categories will help make your trademark process more efficient and deliver better results.

How to know which trademark classes to file in

Choosing a trademark class can be a daunting task, especially for business owners who are just getting started. 

Your first step is identifying the types of goods or services your business offers, which can be challenging if you’re just starting out. 

Next, you can use the USPTO’s Trademark ID Manual to search for identifications of goods and services. 

Keep in mind that certain businesses may need to specify multiple trademark classes. An attorney can help you identify which classes you need to protect your business—and reduce your chances of having your trademark registration rejected. 

With LegalZoom’s trademark registration service, you can complete the process in a few simple steps for nearly 75% less than the cost of using a traditional law firm. All you have to do to get started is tell us about your trademark and answer a few questions about your business. 

An attorney will conduct a comprehensive trademark search to make sure there aren’t any potential issues. If there are, we will search a second mark for free. Once everything is ready to go, the attorney will e-file your trademark with the USPTO.

The most common trademark mistakes

Avoid these common mistakes to facilitate a less stressful trademark registration process.

Bypassing a comprehensive trademark search

Business owners who don't do an in-depth search for trademark classifications risk having their application rejected if their trademark is too similar to an existing trademark. 

Choosing a non-distinctive trademark

Selecting proper specimens of use and choosing an adequately strong mark that's not potentially similar in appearance, sound, or meaning to any other registrations/applications for the relevant goods/services is important. Fanciful or arbitrary marks are much more enforceable than those that are considered suggestive or descriptive.

Assuming automatic approval

Don't assume the application will automatically be approved. The application must meet federal requirements.

Believing the trademark is confidential

Some business owners are not aware the trademark is a public record.

Overpaying fees

Submit an application for a website in Class 35 (CL 35) in order to cover multiple products under one government fee, rather than paying $250-$350 each in fees for several individual classes, attorney Goldman says. The more classifications included for the trademark, the higher the fee.

Becoming overwhelmed 

Business owners often believe choosing a classification is a scary process. Determining trademark classifications can be both tedious and inspiring, according to Coggiola-Belz, Leaxy CEO. "Seeing the breadth of ideas [on the USPTO site] was inspiring," she says. "It gave me the confidence to go for it."

FAQs

Do I need to hire a trademark attorney to choose a trademark classification? 

While you aren’t required to hire a lawyer, a trademark attorney will have the knowledge to help guarantee a successful trademark application, avoid common problems, and potentially save time.

How much does a trademark application cost?

The initial applications cost $250 or $350, depending on which application is chosen. There are subsequent fees to maintain the trademark and a $150 fee to continue the process if an application has entered abandoned status and the business owner wants to revive it.

There's a fee for each classification. So the more classifications there are, the higher the fee. 

Costs for hiring a trademark attorney vary, and a client can be charged hourly or request a flat fee.

Can I apply for a trademark online?

Yes, once you have created a USPTO.gov account, you can complete a trademark application online and submit it via the USPTO’s Trademark Center.

What does it mean if the USTPO returns my application or asks for more information?

This is not unusual. Answer the questions and continue the process.

How long does it take to get a trademark?

Filing and receiving a trademark can take between three months and three years. According to the USPTO, the trademark registration process typically takes 12 to 18 months.