The United States Patent and Trademark Office (USPTO), the federal agency in charge of trademark management, categorizes trademarks into 45 different “classes” of products or services. A registered mark in one class does not infringe on a registered mark in another class. For example, an advertising firm with the trademarked name “Brand-It” does not infringe on the trademark of a company with the same name that manufactures cattle-branding devices. Why? Because the primary purpose of trademark law is to protect consumers from confusion, no reasonable consumer would be confused in this situation.
Advertising, business management, administration, and office functions are all included in Class 35. It primarily includes services rendered by individuals or organizations to (1) assist in the operation or management of a commercial undertaking; (2) assist in the management of the business affairs or commercial functions of an industrial or commercial enterprise; or (3) assist in the advertising of such commercial services.
In particular, Class 35 includes:
- Bringing together a variety of goods for the benefit of others, allowing customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, mail order catalogs, or electronic media, such as websites or television shopping programs.
- services involving the transcription, composition, compilation, or systematization of written communications and registrations, as well as the compilation of mathematical or statistical data
- Advertising agency services and services such as the distribution of prospectuses, either directly or through the mail, or the distribution of samples This Class may include advertising in connection with other services, such as bank loans or radio advertising.
Federal Trademark Class System
A class system governs trademark registration. You must pay a separate registration fee for each class of goods or services that you register. So, if you want to apply for a trademark for posters (Class 16), shirts (Class 25), and advertising (Class 35), you must pay all three fees.
When registering a trademark, you must specify the correct class. If you enter the wrong class, you must restart the application process. Your registration is limited to classes that include the goods or services that you already offer (as evidenced by the specimens you submit) or that you intend to offer (if you are registering on an intent-to-use basis). In order to narrow a search of the PTO’s trademark database, you may also need information about the class number.
Examples of Trademarks in Class 35
Examples within Class 35 include PERFECT POINT MARKETING (advertising consultancy), AIRBNB (online business directories), and LINKTECH (online advertising).
Related or Coordinated Classes
If you are unsure whether to register in Class 35, you may want to consider one of the “coordinated” classes listed below: Insurance and finance services (Class 36), construction and repair services (Class 37), telecommunications services (Class 38), shipping and travel services (Class 39), material treatment services (Class 40), education and entertainment services (Class 41), science and technology services (Class 42), food services (Class 43), medical and veterinary services (Class 44), and legal and security services (Class 45).
A coordinated class is related to another class, usually, because the PTO has discovered that applicants filing in Class 35 frequently file in the coordinated class.
Supplying Specimens for Class 35
A service specimen must demonstrate the use of the mark in a way that potential purchasers would interpret as identifying the applicant’s services and indicating their source.
The specimen must show an association between the mark and the services for which registration is sought when the mark is used in advertising the services. A specimen that only shows the mark and no reference to the services does not demonstrate service mark usage.
When you provide a service, you do not have a product to which you can apply a label. A variety of materials that cannot be used for product marks are acceptable specimens for services. Scanned copies of advertising and marketing materials, such as newspaper and magazine ads, brochures, billboards, direct mail pieces, and menus, are included (for restaurants).
Letterhead stationery and business cards bearing the mark may be used if the services are clearly reflected on them because the name or symbol claimed as a mark would be used to identify the services provided in that context—that is, as a mark rather than a trade name. If the mark appears and the services are described in the letter, a letter on stationery will even be accepted as a specimen for a service mark.
In cases of services rendered over the Internet, a screenshot of the full Web page should be fine. If the mark is being prominently displayed on the home page, so much the better.
The following are unacceptable specimens for marks for Class 35 services:
- News releases or articles based on news releases.
- Documents showing trademark rather than service mark usage (use of the mark in connection with goods rather than services).
- invoices and similar documents such as packing slips, and
- Letterhead or business cards that bear only the mark and a company name and address are not adequate specimens (use of the mark to identify a company, such as on letterhead).
As previously discussed, one exception is if the letterhead or text of the letter identifies the services represented by the mark.
You may be wondering about the role of audio as a suitable specimen. The majority of marks can be found in writing somewhere. You may submit a sound file of the audio if your mark represents a service and appears only on radio ads or in other audio forms.