The United States Patent and Trademark Office (PTO), the federal agency in charge of federal trademark registration, categorizes marks into 45 different “classes” of products or 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.
Scientific and technical services, particularly those provided by members of professions such as chemists, physicists, engineers, or computer programmers, are included in Class 42. It also includes engineering services such as evaluations, estimates, research, and reports in scientific and technological fields, as well as scientific research services for medical purposes.
Examples of Trademarks in Class 42
Consider marks like AGRIAN (computer services for agriculture), PIXEL POOL (graphic illustration), and JIFF (parenting skills software), all of which are good examples of Class 42 trademarks.
Class 42 is not as broad as you might expect, however. You would not use Class 42 if you were registering:
- business research and evaluations (Class 35 – Advertising and Business Services)
- word processing and computer file management services (Class 35 – Advertising and 0Business Services)
- financial and fiscal evaluations (Class 36 – Insurance and Finance Services)
- mining and oil extraction (Class 37 – Construction and Repair Services)
- computer (hardware) installation and repair services (Class 37 – Construction and Repair Services)
- services provided by the members of professions such as medical doctors, veterinary surgeons, psychoanalysts (Class 44 – Medical and Vet Services)
- medical treatment services (Class 44 – Medical and Vet Services)
- garden design (Class 44 – Medical and Vet Services), or
- Legal services (Class 45 – Legal and Security Services).
Related or Coordinated Trademark Classes
If you are unsure whether to register in Class 42, you may want to look into the “coordinated” classes listed below: Class 36 – Insurance and Finance Services, Class 37 – Construction and Repair Services, Class 38 – Telecommunications Services, Class 39 – Shipping and Travel Services, Class 40 – Material Treatment Services, Class 41 – Education and Entertainment Services, Class 43 – Food Services, Class 44 – Medical and Vet Services, Class 45 – Legal and Security Services
A coordinated class is related to another class, typically because the PTO has determined that applicants filing in Class 42 frequently also file in the other classes.
The cost of trademark registration is also determined by the 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.
Supplying Specimens for Trademark Class 42
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 42 service marks:
- documents demonstrating 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 letterhead or business cards that bear only the mark and a company name and address (use of the mark to identify a company, such as on letterhead; though one exception is if the letterhead or the text of the letter identifies the services represented by the mark.
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.