When you’re filing a trademark application, it goes into what we call different classes. There are 45 different classes of trademarks, and these classes are determined at international level. All this means is that different types of goods or services fall into each class. For example, if you’re manufacturing clothing, that would be class 25 or If you are printing physical magazines, that would be class 16. So for every type of goods and service, there is a particular class that you have to nominate when you file your trademark application.
The more classes you nominate, the more it costs because the fees are added for each class. So it’s quite good if you can narrow down the number of classes you need, but within those classes, get the best and broadest possible protection. For example, with clothing, if you were only manufacturing t-shirts my recommendation would be when you file your trademark application, don’t only claim for t-shirts because you might want to go into jeans later on or some other article of clothing.
T-shirts are a very narrow specification and remember, you’re paying for class 25 anyway, so you might as well include other things when possible. So, you might look on the trademarks register and see somebody has registered clothing, namely, t-shirts. But if you do clothing, including t-shirts, that means you’re covered for all clothing, including t-shirts. With the clothing class, you can go even further and include footwear and headgear, which could be something you may want to do further down the line. So what I do for my clients when I decide what to include in the list of goods and services, is I look at my over 20 years experience of obtaining trademarks for my clients, and I can see a trajectory of many businesses are similar.
So if you’re a clothing business, you are likely to have a similar trajectory to previous clothing businesses. I’m pretty good at anticipating what some of these businesses, might do in the future, either expanding or going into different avenues. So within that class, I broaden what they might be claiming for. For example, I have a client who just wanted to publish online books, that’s all she wanted to do. That’s class nine, but I said to her, I can see this book is amazing, in the future you might also want to publish apps or you might also want to do online training courses under the same brand. If she had folded herself, she would have just gone for the electronic books, but at the end, she had quite a long list of things that she could perhaps go into if she wanted and in doing so, she increased her protection and got a better bang for her buck.
But, what happens if you’re on a limited budget? I previously mentioned electronic books and people will often ask, which class should I register my trademark in? It depends, because your trademark protection overlaps into different classes. So if you’re thinking of traditional books, it would be class 16 because that’s paper printed products, but if you’re thinking of electronic books, that would be class nine because that’s the electronic goods. If someone is on a limited budget, when it comes to the decision between books and electronic books, I always say go for the electronic class because it covers more things such as apps and online courses which your paper publication class will not cover.
There’s about an 80% chance or overlap from electronic books to paper books anyway. So it gives you more bang for your buck by selecting, not only the one that your goods and services fall into, but the one that gives you as broad protection as possible. Good luck with your trademark, my name is Cathryn Warburton and I am the Legal Lioness.
