The United States Patent and Trademark Office (USPTO), the federal agency in charge of federal trademark registration, categorizes marks into 45 different “classes” of goods and services. The purpose of these classes is to allow various types of businesses to register their trademarks in categories most closely related to their primary business. Even identical trademarks do not necessarily infringe on one another if they are registered in different classes. A cell phone company called “HandsFree,” for example, would not infringe on a company called “HandsFree” that manufactures unicycles for transportation.
Telecommunication services, specific services that allow at least one person to communicate with another through sensory means, are included in Trademark Class 38. These services include those that (1) allow one person to talk to another, (2) send messages from one person to another, and (3) put one person in oral or visual communication with another (radio and television). Not surprisingly, Class 38 is essential for services used in the distribution of radio or television programs.
The Trademark Class System
As previously stated, trademark registration is based on a class system. 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) and shirts (Class 25), you’ll have to pay two 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 38
Examples of trademarks in Class 38 include TV JAPAN (broadcast of television programs), DOGPILE (computer telecommunications services), and NEON (cable TV broadcasting services).
However, you would not use Class 38 if you were registering radio advertising services (Class 35 – Advertising and Business Services) or telephone marketing (telemarketing) services (Class 35 – Advertising and Business Services).
Related or “Coordinated” Classes
A coordinated class is related to another class, typically because the PTO has determined that applicants filing in Class 38 frequently also file in the coordinated classes. If you are unsure whether to register in Class 38, you may want to look into the “coordinated” classes listed below:
Business Services, Class 36 – Insurance and Financial Services, Class 37 – Construction and Repair Services, Class 39 – Shipping and Travel Services, Class 40 – Materials Treatment Services, Class 41 – Education and Entertainment Services, Class 42 – Science and Technology Services, Class 43 – Food Services, Class 44 – Medical and Veterinary Services, Class 45 – Legal and Security Services.
Providing Specimens for Class 38
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 the case of Internet-based services, a screenshot of the entire Web page should suffice. The more prominently displayed the mark on the home page, the better.
The following specimens are not acceptable for Class 38 service marks:
- news releases or news release-based articles
- Invoices and similar documents, such as packing slips, that demonstrate trademark rather than service mark usage (use of the mark in connection with goods rather than services).
- Letterhead or business cards with only the mark and the company name and address (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.
There is also the option of having audio marks. In general, most marks are written down somewhere. If, on the other hand, your mark represents a service and appears only on radio ads or in another audio form, you may submit a sound file of the audio.