The United States Patent and Trademark Office (USPTO), the federal agency in charge of trademark registration and management, categorizes marks into 45 different “classes” of products and services. The goal of these classes is to allow different types of businesses to register their trademarks in categories that are most closely related to their core business.
No reasonable consumer, for example, would be confused into thinking that a security company called “Protector” was the same as a company called “Protector” that makes dental retainers and mouth guards. These various types of goods do not compete with one another.
Security services (protection of property and individuals) and other related personal, legal, and social services are included in Class 45.
Examples of Trademarks in Class 45
Consider ROSELLE POLICE (police and civil protection services), SOS ALARM (security system installation), LITTLER (legal services), and ANSWER MAN (legal services), all of which are good examples of Class 45 trademarks.
You would not use Class 45 if you were registering:
- professional services giving direct aid in the operations or functions of a commercial undertaking (Class 35 – Advertising and Business Services)
- services relating to financial or monetary affairs and services dealing with insurance (Class 36 – Insurance and Financial Services)
- escorting of travelers (Class 39 – Shipping and Travel Services)
- security transport (Class 39 – Shipping and Travel Services)
- services consisting of all forms of education of persons (Class 41 – Education and Entertainment Services)
- performances of singers or dancers (Class 41 – Education and Entertainment Services)
- computer services for the protection of software (Class 42 – Science and Technology Services)
- Services provided by others to give medical, hygienic, or beauty care for human beings or animals (Class 44 – Medical and Veterinary Services).
Related or Coordinated Trademark Classes
If you are undecided about enrolling in Class 45, you may want to look into the “coordinated” classes listed below: Advertising and Business Services (Class 35), 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), and Medical and Veterinary Services (Class 44).
A coordinated class is related to another, usually, because the PTO has determined that applicants filing in Class 45 frequently file in the co-ordinate class.
Registration Fees Based on Number of Classes
Your first instinct may be to register for all 45 classes, or at least all coordinated classes. Not only would the PTO most likely reject such an approach, but registration fees would increase based on the number of classes registered.
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.
Specimens for Class 45
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 (such as security or legal services), there is no “product” to which you can attach 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 lexis, 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.
Improper Class 45 Specimens
The following specimens are not acceptable for Class 45 service marks:
- news releases or news release-based articles
- Documents demonstrating trademark rather than service mark usage (use of the mark in connection with goods rather than services), such as invoices and packing slips, and letterhead or business cards that bear only the mark and a company name and address, are insufficient 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.
Audio samples are also not acceptable. 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.