Trademark Classes Explained: Choosing the Right Class for Your Business

The trademark system has divided all goods and services into 45 classes. The cases you file under the specific class(es) where your business engages in selling goods and services. If you choose the wrong class, your application can be rejected, and your trademark may be unprotected in the class(es) where your business is selling goods and services.

Trademark classes can be thought of as the building blocks of any trademark application. When you are filing a trademark in the U.S., you are not securing the right to your trademark name for all goods and services. You are securing the right for a particular segment of the marketplace. This is a point of leverage for your competitors that many founders only appreciate when they have cause to.

According to the Nice Classification system, products and services are classified into 45 classes. Classes 1 to 34 are for products, and classes 35 to 45 are for services. Your application must specify which class(es) contain your business activities, and each class you cover will contain a separate application fee.

How the 45 Trademark Classes Are Organized

While at first glance the class structure may appear arbitrary, upon closer inspection, it can be seen that each product class is assigned according to the industrial classification, which is loosely followed. For example, Class 5 covers pharmaceuticals and health supplements, Class 9 covers software and electronics, Class 25 covers clothing, and Class 30 covers food and condiments.

Service classes will represent functional activities businesses engage in. Class 35 will cover advertising, business management, and retail services, while Class 36 will cover services related to finance and insurance. Lastly, Class 41 will cover services related to education, entertainment, and training, while Class 42 will cover all services related to IT, tech consulting, and software-as-a-service.

Getting the right class is tricky. The same business type could fall across two, three, or more classes based on how it operates. Without experience reading filing records, it’s hard to differentiate classes since the lines are not always clear.

Why Choosing the Wrong Trademark Class Is a Real Problem

If you choose the incorrect class, the examining attorney will send you an Office Action. This results in delays and costs for you to respond, as well as a possible refusal if the description of your goods or services cannot be adjusted to fit the selected class.

A bigger problem is that you will have less protection than you believe. Class 25 trademark registrations for apparel do not mean you are protected if a competitor uses your Class 18 bags or accessories to sell your name. You are only protected in the classes you are registered for.

This is commonly seen with tech founders. Many will only register in Class 9 because their product is software. However, many of these businesses provide subscription-based support or consulting services that fall in Class 42. Both registrations are required for real protection. If one is omitted, you have a gap.

Which Trademark Classes Apply to Your Business Type

Understanding which classes usually apply to your type of business is the fastest way to eliminate confusion. Examples include:

E-commerce and product businesses: Class 35 plus the applicable product class, which could be Class 25 for apparel or Class 21 for kitchen goods, among many others.

SaaS and software companies:

• Class 9: downloadable software
• Class 42: cloud-based platforms, software development services, SaaS

Consulting and professional services:

• Class 35: business consulting
• Class 41: training or educational services
• Class 45: legal services

Food and beverage brands:

• Class 30: processed foods, coffee, tea, and snacks
• Class 32: non-alcoholic beverages
• Class 33: alcoholic beverages, except beer
• Class 35: If you have a retail operation

Health supplements and wellness products:

• Class 5: supplements with health claims
• Class 3: cosmetic or topical products

An example of something that often surprises founders is that selling products directly through your own website is considered a retail service under Class 35, separate from the product class. You typically need both.

Mistakes We See in Trademark Class Selection

The most common mistake is over-claiming. Founders believe that registering in all classes that may apply to their business will provide better protection. This practice dramatically increases costs. Later, in the statement of use or renewal request, you will be required to demonstrate actual use in commerce in all of the classes that you registered.

You will need to provide a specimen of your mark in commerce for each class. If you register your mark in six classes but have only used it in two, you will waste resources acquiring protection for six classes you have no actual use for. In the end, you will also have a problem proving that you used your mark in those classes.

Under-claiming is uncommon, but it can occur. A trademark applicant who registers a trademark only in a core goods class, while providing supplementary services, allows trademark leeway for competitors to act.

Being specific with descriptions is also important. A trademark application form answer that simply states “software” is insufficient and will be rejected. Providing answers along the lines of “computer software designed for project management” or “downloadable software designed for financial reporting” is specific enough to warrant approval. Getting a trademark application right the first time is one reason trademark consulting is worth the investment.

International Considerations for Non-Resident Founders

The trademark class structure remains the same if you are a non-U.S. founder and are registering a trademark in the U.S. The Nice Classification system is a globally recognized classification system, so if you have a trademark registered in your country, the same classes will apply when you file a U.S. application.

Additionally, if you are a foreign national and wish to file a trademark application in the U.S. directly, you are required to retain a U.S.-based attorney. Applications submitted in the absence of a U.S. attorney will be suspended during the examination process.

You have the option to file a Madrid Protocol application with WIPO and extend your home-country trademark to the U.S. In this instance, the trademark classes as they exist in your base registration will apply to your U.S. trademark registration. We partner with international founders frequently on both direct U.S. registrations and Madrid-based extensions.

FAQ

Can I register multiple trademark classes in one application?

You can submit an unlimited number of classes in an application. Be prepared to pay an additional government fee for each additional class. Small businesses usually avoid registering beyond three classes. If you register beyond that number of classes, you must show actual use in business for each class.

Can I add additional classes to my trademark after it is registered?

No. There is no legal way to add additional classes to a trademark registration after it is registered. If you begin using another category of goods and/or services, then you must submit a separate trademark application for that class.

What is the difference between Class 9 and Class 42?

Class 9 covers goods and services offered as downloadable software products. Class 42 covers software-as-a-service, software design and development, and other IT and technology services.

Does a trademark registration in one class prevent the same mark from being registered in other classes?

No. Trademark registrations are limited to particular classes. If a mark is registered in Class 25 for clothing, for example, there is nothing to stop a similar mark from being registered in Class 18 for bags or Class 14 for jewelry.

What happens if I select the wrong class?

If you select a class that is not in accordance with the goods and services being offered in the application, you will receive an Office Action notice. You have three months to respond, with the option to extend the deadline to six months.

Register Your Trademark With the Right Classes From the Start

The best way to safeguard your brand is to get your class selection correct at the outset. Trademark filing mistakes cost money, and some cannot even be fixed.

Easyfiling assists founders with trademark filings in more than 175 countries and handles class research, description drafting, and trademark examination responses. Contact the EasyFiling team if you wish to register your trademark or would like to consult on your class selection first.