Trademark Issue Overview
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Trademarks vs. Service Marks
Although it is common to use the term “trademark” interchangeably, there is a difference. Trademarks are products. Service Marks are services.
The trademark symbol is TM for pending USPTO applications and registered State marks. Similarly, the service mark symbol is SM for pending USPTO applications and registered State marks.
When a mark actually becomes registered by the USPTO, after 10-12 months of filing, then the ® circle-R symbol is used for both trademarks and Service Marks.
The TM and SM symbols may be used for products and services intending to pursue registration at the State or Federal level. Use of the TM and SM symbols shows others that you claim protection to your name.
Without actual or pending registration, Common Law first use rights are the same as if the TM or SM symbols are not used. Trade name rights do not change if symbols are mixed up. If a mark is Federally registered ®, it is registered ®.
All goods or services are categorized within International classes. Goods run from classes IC 1-34, while Services are in IC 35-45. Please see chart below. There is also a handy tool at the United States Patent and Trademark Office to help identify classes.
Trade name research is routinely broad in defining exact and related goods and services classes. Conflicts will come from the same class, but similarities may differ quite a bit, extending goods into service classes and services into goods classes.
For example, a beauty salon not only has other beauty salons to be concerned with, but also cosmetic products, shampoos and perfumes as well as personal services related to beauty salons. Additionally, famous names extend into all classes.
Our experienced team will encompass all variations and classes into their search to find similarities. Similar names in sound, appearance and meaning are much more likely to affect your legal usage of a name than exact conflicts within the same class.
International Goods/Services Classes
Class 1 (Chemicals)
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Class 2 (Paints)
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Class 3 (Cosmetics and cleaning preparations)
Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.
Class 4 (Lubricants and fuels)
Industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminates candles, wicks.
Class 5 (Pharmaceuticals)
Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants,preparations for destroying vermin,fungicides, herbicides.
Class 6 (Metal goods)
Common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of common metal not included in other classes, ores.
Class 7 (Machinery)
Machines and machine tools, motors and engines (except for land vehicles), machine coupling and transmission components (except for land vehicles), agricultural implements, incubators for eggs.
Class 8 (Hand tools)
Hand tools and implements (hand operated), cutlery, side arms, razors.
Class 9 (Electrical and scientific apparatus)
Scientific, nautical, surveying, electric, photographic, cinematographer, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus.
Class 10 (Medical apparatus)
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopedic articles, suture materials.
Class 11 (Environmental control apparatus)
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Class 12 (Vehicles)
Vehicles, apparatus for locomotion by land, air or water.
Class 13 (Firearms)
Firearms, ammunition and projectiles; explosives; fireworks.
Class 14 (Jewelry)
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, jewelry, precious stones, horological and chronometric instruments.
Class 15 (Musical instruments)
Class 16 (Paper goods and printed matter)
Paper, cardboard and goods made from these materials, not included in other classes, printed matter, book binding material, photographs, stationery, adhesives for stationery or household purposes, artists materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic material for packaging (not included in other classes), playing cards, printers type, printing blocks.
Class 17 (Rubber goods)
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, flexible pipes, not of metal.
Class 18 (Leather goods)
Leather and imitations of leather, and goods made of these materials and not included in other classes, animal skins, hides, trunks and traveling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery.
Class 19 (Non-metallic building materials)
Building materials (non-metallic), non-metallic rigid pipes for building, asphalt, pitch and bitumen, non-metallic transportable buildings, monuments, not of metal.
Class 20 (Furniture and articles not otherwise classified)
Furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Class 21 (Housewares and glass)
Household or kitchen utensils and containers (not of precious metal or coated therewith), combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, steel wool, unworked or semi-worked glass (except glass used in building), glass-ware, porcelain and earthenware not included in other classes.
Class 22 (Cordage and fibers)
Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes), padding and stuffing materials (except of rubber or plastics), raw fibrous textile materials.
Class 23 (Yarns and threads)
Yarns and threads, for textile use.
Class 24 (Fabrics)
Textiles and textile goods, not included in other classes, bed and table covers.
Class 25 (Clothing)
Clothing, footwear, headgear.
Class 26 (Fancy goods)
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Class 27 (Floor coverings)
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile).
Class 28 (Toys and sporting goods)
Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Class 29 (Meats and processed foods)
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables, jellies, jams, fruit sauces, eggs, milk and milk products; edible oils and fats.
Class 30 (Staple foods)
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice.
Class 31 (Natural agricultural products)
Agricultural, horticultural and forestry products and grains not included in other classes, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt.
Class 32 (Light beverages)
Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages.
Class 33 (Wines and spirits)
Alcoholic beverages (except beers).
Class 34 (Smokers' articles)
Tobacco, smokers’ articles; matches.
Class 35 (Advertising and business services)
Advertising, business management, business administration, office functions.
Class 36 (Insurance and financial services)
Insurance, financial affairs, monetary affairs, real estate affairs.
Class 37 (Construction and repair services)
Building construction, repair, installation services.
Class 38 (Communication services)
Class 39 (Transportation and storage services)
Transport, packaging and storage of goods, travel arrangement.
Class 40 (Material treatment services)
Treatment of materials.
Class 41 (Education and entertainment services)
Education, providing of training, entertainment, sporting and cultural activities.
Class 42 (Scientific and technological services and research)
Scientific and technological services and research and design relating there to industrial analysis and research services, design and development of computer hardware and software legal services.
Class 43 (Food and drink services)
Services for providing food and drink, temporary accommodation.
Class 44 (Medical and veterinary services)
Medical services, veterinary services, hygienic and beauty care for human beings or animals, agriculture, horticulture and forestry services.
Class 45 (Personal and social services)
Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.
Please note that the above goods and service descriptions are too broad to used directly on a trademark application. Applications with only a class number are not acceptable.
Specimens of Use
A Specimen of Use is a sample of how the mark is used in commerce. In-Use Trademark applications require a Specimen of Use to be included with the trademark application.
Acceptable Specimens for Products – International Classes 1 to 34
- Tags or labels used on your product
- A picture of your product displaying the mark prominently
- An advertisement displaying the mark and describing your product
- Container for your product displaying the mark
- Displays associated with your product that display the mark
- The actual product (if not too large or bulky)
- A copy of a web site page that displays the mark prominently
Not including: stationery, business cards, invoices, letterhead, brochures, order forms, bills, receipts, catalogs, or press releases.
Acceptable Specimens for Services – International Classes 35 to 45
- Signs displaying the mark
- Brochures or advertisements displaying the mark and describing the services
- Menus displaying the mark
- Photographs showing the mark as it is used in the rendering or advertising of the services (i.e., the side of a delivery truck or a store front)
- Business cards or stationery showing the mark in connection with the services
- A copy of a web site page that displays the mark prominently
Not including: blank letterhead or business cards that do not show the mark in connection with the rendering of the services.
- Send one specimen for each International Class you apply for
- If you are registering a logo and a name together, the mark in the specimen must match the mark displayed on the drawing page.
- In general, the specimen should be flat and not larger than 8.5 inches by 11 inches
- A small specimen such as a label or a tag may be attached to a sheet of paper labeled “specimen” (use a separate sheet for each international class)
Intent-to-Use Trademark Applications
Specimens of Use are not filed with Intent-to-Use (ITU) trademark applications. Only marks that are In-Use require a specimen of use. If you file an ITU, it will be necessary to file the Specimen of Use when filing the Allegation of Use.