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On Demand

Navigating the Trademark Classes to Help Your Client Select the Right Ones

1h 2m

Created on November 11, 2021




Trademark classes provide an easy way to classify goods and services, and they simplify trademark searching since, in many cases, we only need to search within that trademark's particular class. Classes are also important because they allow trademarks to co-exist; ACME can be the registered mark for both car parts and for real estate sales services. It's thus important to get the trademark class(es) right for the client's goods and/or services. The NICE Classification system has been used in the USA since September 1973. US trademark classes still exist, but they are merely references at this point - there for the benefit of marks that predate the change to the NICE Classification System. Under the NICE Classification system, there are 45 separate trademark classes.

Once the classes for the mark are determined, we need to ascertain that the mark is free to use in that class. Will the client's mark conflict with another mark registered or pending registration with the USPTO? If so, are the specific goods or services associated with conflicting marks so closely related to each other that they are likely to be marketed in the same channels and sold to the same consumer?

This program will review the 45 trademark classifications, help you navigate the classes to help your client determine which classes and descriptions acceptable to the USPTO best fit the product or service described by the mark, and provide examples of how to pin down a mark that doesn't fit nicely into the boxes provided by the NICE classification system. 

This course will benefit trademark attorneys and business advisors seeking to understand trademark classification structure and strategy.

Learning Objectives:

  1. Review the NICE Classification system

  2. Determine the trademark class(es) appropriate for a client's mark

  3. Develop a work-around for a competing senior mark

  4. Predict more easily for a client the likelihood of successful registration of their mark

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