Which classes for trademark?

[panthro]

My business (website and app) advertises products online, users can communicate about these products to each other. If a user is interested in purchasing X product, they click on it and it will go through to a site selling the product, e.g. amazon, where they can buy it.

I've considered that I need:

- class 35 - Advertising; business management; business administration; office functions. (Im advertising products online).
- class 38 - Telecommunications. (Users can communicate to each other on the website/app).
- class 42 - Scientific and technological services and research and design relating thereto; industrial analysis and industrial research services; design and development of computer hardware and software. (The website/app is software).

I'm not sure if I would need class 41 - Education; providing of training; entertainment; sporting and cultural activities. As the website/app could be seen as a form of entertainment.

I'd appreciate your thoughts on this and if there's any other classes you think I should consider?

 

[Hughj11]

Hey there,

There are a few things to consider regarding classes, and I don’t think anyone can tell you exactly which classes you need to file for without knowing a fair bit more.

What I can say is that you should consider any future development and new services you will offer. You can’t add more classes to a registered mark and you have 5 years from publication to prove use, so if you have any further plans for future goods/services I would include those too.

You should also be as specific as possible to avoid any possible infringement. For example, telecommunications is very broad and covers a lot of services and so the scope of confusion is increased.

Lastly, you do not need to cover everything you do, only the goods or services you provide. So for example, development of computer software is generally applicable to software development providers. If you just provide a software for use, you are not providing computer software development.

I hope this is somewhat helpful. Let me know if you need anything else, I’ll be happy to help where I can.

 

[panthro]

Hey there,

There are a few things to consider regarding classes, and I don’t think anyone can tell you exactly which classes you need to file for without knowing a fair bit more.

What I can say is that you should consider any future development and new services you will offer. You can’t add more classes to a registered mark and you have 5 years from publication to prove use, so if you have any further plans for future goods/services I would include those too.

You should also be as specific as possible to avoid any possible infringement. For example, telecommunications is very broad and covers a lot of services and so the scope of confusion is increased.

Lastly, you do not need to cover everything you do, only the goods or services you provide. So for example, development of computer software is generally applicable to software development providers. If you just provide a software for use, you are not providing computer software development.

I hope this is somewhat helpful. Let me know if you need anything else, I’ll be happy to help where I can.

Thank you for your advice.

Can I ask, when you go through and search for classes on the trademark application, it asks you to be more specific, and check boxes relating to specific parts of your business. Do these become part of the trademark? I always thought it was just broad classes that were attached to a trademark, not anything more specific?

 

[Hughj11]

Yes, these will form part of the application and be the specific goods and services that you apply for.

The classes are just broad classifications of different goods and services and there are many different goods/services within these classes. There are also issues when it comes to the absolute grounds.

For example, if I wanted to register the word “banana” for food in class 29, that would be alright from an absolute ground perspective, as long as my goods didn’t include bananas as then it would be descriptive. So for every other food within that class it would be fine, requiring me to be specific in the goods within the class.

 

[panthro]

Yes, these will form part of the application and be the specific goods and services that you apply for.

The classes are just broad classifications of different goods and services and there are many different goods/services within these classes. There are also issues when it comes to the absolute grounds.

For example, if I wanted to register the word “banana” for food in class 29, that would be alright from an absolute ground perspective, as long as my goods didn’t include bananas as then it would be descriptive. So for every other food within that class it would be fine, requiring me to be specific in the goods within the class.

Thank you. can I ask, there seems to be many similar checkboxes, do I have to go through and find every single one that is applicable to my business?

 

[Hughj11]

In one word, yes.

There are nuisances to it though so if you’d like some relevant advice you can message me and I can walk you through it and everything else to consider. I think this would be better discussed through private messages.

 

[panthro]

In one word, yes.

There are nuisances to it though so if you’d like some relevant advice you can message me and I can walk you through it and everything else to consider. I think this would be better discussed through private messages.

Ok, let me review it and I will send you a message if I get stuck.

Can I ask a question relating to what you mentioned earlier?

"Lastly, you do not need to cover everything you do, only the goods or services you provide. So for example, development of computer software is generally applicable to software development providers. If you just provide a software for use, you are not providing computer software development."

I plan to have an app, would I need class 9 as I would provide downloadable software?

 

[Hughj11]

Yes apps and downloadable software are in class 9!

 

[panthro]

Yes apps and downloadable software are in class 9!

thanks but would I need this class if im providing my service as an app?

 

[Hughj11]

We’re pretty much at the point where I’m advising you on your application. I’m not allowed to answer these on public forums as they’re specific legal advice and part of my job.

I hope you understand. You can message me and we can go through everything and set up a consultation if you’d like.

 

[panthro]

We’re pretty much at the point where I’m advising you on your application. I’m not allowed to answer these on public forums as they’re specific legal advice and part of my job.

I hope you understand. You can message me and we can go through everything and set up a consultation if you’d like.

I understand, thank you for all your help. I'm going to do some more reading first and then I will be in touch.

Thank you.