Trademark Class 35 is one of the most widely used of the “International Classes,” or ICs, in new trademark registration applications.
This is because Class 35 is the IC used for so-called retail or whole sale store services, both storefront and online, via e-commerce websites.
Thus, if your business engages in the service of selling products, whether manufactured by you or by others, Class 35 is one of the ICs in which you probably should file your trademark registration application.
Before we get more specific about what sorts of products or services are included in Class 35 in Federal trademark registration applications, let’s back up.
What is a trademark International Class, and why do you need to register a trademark in one or more ICs?
International Classes and Trademark Use in Commerce
Trademarks are, on the Federal register maintained by the US Patent and Trademark Office (USPTO) divided into a variety of different categories of various products or services.
The reason for this is that a trademark may only be registered with the USPTO if it is being used in interstate (across state lines) commerce in connection with the sale of a product or service.
That is, you cannot register a trademark simply because you coined an interesting term or drew an interesting design. That is the province of US copyright law.
Trademark registration and trademark law in the US generally is designed to offer a guarantee to US consumers that what they are buying under a given brand is what they think they are buying. It is a guarantee that the source of a product or service sold under a name or with a logo design in the US is being sold by the person or company that consumers expect to be selling it.
It is a consumer protection measure, in other words. At least, this is true from the standpoint of the US Congress, which drafted the Lanham Act (also known as the US Trademark Act) with that ultimate purpose in mind.
For you, Federal trademark registration is more than that.
Trademark registration is indeed, like Copyright registration, a form of intellectual property ownership. It offers you the exclusive right to use a name or slogan or logo in connection with the sale of your product or service.
However, unlike Copyright registration and protection, which persists for a given amount of time depending on the date on which you registered the Copyright, you only retain a trademark registration so long as you continue to use it.
To register a trademark, that said, a proposed mark must be unique enough to be recognized as yours by consumers.
The USPTO will not allow any trademark to register if it believes that there is any likelihood that a consumer (anywhere in the US) will be confused as to who is selling the product or service under that name, slogan, or logo.
However, it is possible that the product or service being sold is so different from those sold by another person under a similar (or exactly the same) trademark that both can be registered as Federal trademarks.
This is where Class 35 and the International Class categorization system comes into play.
Two identical or similar trademarks may register where there is no likelihood of consumer confusion.
This can happen where the goods or services sold by the competing trademarks are in no way capable of being confused with one another.
For example, if the word “Yaggleyorgle” is used both by a company in connection with the sale of highly specialized industrial machinery components primarily to auto industry suppliers on a business-to-business basis and by a company selling brightly colored t-shirts via an Amazon storefront, there is not likely to be much consumer confusion.
It is possible that both companies would be able to register “YaggleYorgle”—in two separate International Classes.
The t-shirt e-commerce retailer would use Class 35. The industrial parts manufacturer would not.
International Classes: Merely Administrative
It is worth noting that Class 35 and the other trademark International Classes were developed by the USPTO for administrative convenience.
That your trademark registration application is filed in Class 35 and another company registered a trademark in Class 43 (food services, restaurant and hotel services, etc.) does not mean that you will not receive a Likelihood of Confusion refusal if the marks are similar or identical.
For example, if your Class 35 e-commerce website business involves the retail sale of cookies and a prior registration in Class 43 was filed and successfully registered for bakery services, the USPTO Examiner may refuse your registration on the basis that bakeries tend to sell cookies and that consumer confusion may result.
Services Included in Trademark Class 35
So what services are included in Class 35?
The stated heading or “name” of trademark Class 35 is “advertising and business services.”
Class 35 includes primarily services rendered by individuals or enterprises with the principal object of:
- Offering help in the working or management of a commercial undertaking; or
- Offering help with the management of the business affairs or commercial functions of an industrial or commercial enterprise.
Given that, it is plain that Class 35 covers many more types of business services than simply retail or wholesale store services.
In particular, Class 35 includes the following according to the USPTO’s Trademark Manual of Examination Procedures (TMEP):
- Store services for the sale of goods to consumers, whether provided by retail stores, wholesale outlets, through vending machines, mail order catalogs or by means of electronic media;
- Advertising, marketing and promotional services;
- Shop window dressing;
- Public relations services;
- Production of teleshopping programs;
- Organization of trade fairs and exhibitions for commercial or advertising purposes;
- Search engine optimization for sales promotion;
- Commercial assistance services, for example, personnel recruitment, negotiation of business contracts for others, cost price analysis, import-export agency services;
- Administration services relating to business transactions and financial records, for example, book-keeping, drawing up of statements of accounts, business and financial auditing, business appraisals, tax preparation and filing services;
- Commercial administration of the licensing of the goods and services of others;
- Services consisting of the registration, transcription, composition, compilation or systematization of written communications and registrations, and also the compilation of mathematical or statistical data;
- Office functions, for example, appointment scheduling and reminder services, data search in computer files for others, computerized file management, telephone switchboard services.
In short, Class 35 covers a lot of ground.
If you only read the first paragraph of this Article, you might think your retail store service would not compete for trademark registration with a company providing employee recruitment services—but you’d be wrong.
Trademark Class 35: The Bottom Line
The bottom line with regard to trademark Class 35 is that, if you are considering filing a trademark registration application, your best shot at success is to retain an experienced Michigan trademark lawyer.
A knowledgeable trademark lawyer, in Detroit or elsewhere, will run a professional, thorough pre-filing clearance search before preparing and filing your registration application.
This is no mere Google search. A professional trademark clearance will ensure that your business or product or service name, logo, or slogan is not only not already registered but is not already in use anywhere in the United States—in Class 35 or any other related class. (In the US, your trademark registration can be canceled by someone else using the mark longer, even if they hadn’t before registered a trademark.)
A professional trademark clearance will ensure that not only is your trademark free and clear but that it will be a strong and defensible mark going forward, whether you file in Class 35 or any other IC.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting clients in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.