A
trademark class is a category in which a trademark is put into. Each class
covers certain similar goods or services which the trademark covers. For
example, class 25 covers clothing. If you apply for a trademark and tell the trademark
office that your trademark will be used to represent shirts, for example, your
trademark will be put into class 25. You can potentially get a trademark for a
name that someone already has a trademark for, if you apply for a different
class.
When you
apply for a trademark, you need to tell the trademark office what goods or
services this trademark will represent. For Before reading further, make sure
you understand the basics of what a trademark is. You should know what it means
that a trademark acts as an identifier of source. To get the 101
on trademarks, read What is a Trademark? first.
example,
Coke will tell the trademark office that the Coca-Cola trademark will be used
to represent soft drinks. When people see Coca-Cola on soft drinks, Coke wants
people to know that the soft drink was made by Coca-Cola. When approved, Coke’s
trademark will prevent people from using the Coca-Cola name on soft drinks, and
anything that is similar to soft drinks. This is because soft drinks was
indicated on Coke’s trademark application. If someone uses the name Coca-Cola
on a completely unrelated product, bookshelves for example, they may be able to
do so since bookshelves are quite different from soft drinks.
When the
trademark office looked at Coke’s trademark application for Coca-Cola, they put
the trademark into class 32 which is the class for most beverages. This is
because when Coke applied for the trademark, they told the trademark office the
trademark will be used to represent soft drinks and the trademark office knew
to put the application into class 32. Now that they have their trademark
approved and put into class 32, the class can help others determine how much
protection the trademark covers. Generally speaking, if Coke has a trademark in
class 32, you likely cannot use their trademark with any product that is also
in class 32. For example, you likely cannot use Coca-Cola to sell juices.
Further, if you applied for the trademark Coca-Cola to try and represent any
product in class 32, such as juices for example, you likely will be rejected.
This is because Coke already has a trademark for Coca-Cola in class 32, and you
are trying to apply for the same name to represent goods in the same class Coke
already is in.
Generally
speaking again, if you were to apply for the same name in a different class,
you may be able to get a trademark. Let’s look at an example with the name
“Dove”:
You can
see above that there is a Dove soap and there is also a Dove Chocolate,
trademarks owned by two separate companies. The simple explanation as to why
they can both own trademarks for Dove is because they have applied for
trademarks in different classes. Dove owned by Mars is in class 30 for
chocolates, whereas Dove owned by Unilever is in class 3 for soaps.
However,
there is a longer explanation. The real reason that both companies can each own
a trademark for Dove is not necessarily because they have applied for goods
that are in different classes, but rather because the trademark office believes
that people buying Dove chocolate will not be confused and think that the
chocolate was made by the company that makes soap. Vice versa, the trademark
office believes that people buying Dove soap will not think the soap was made
by the company that makes chocolate. The key is that the trademark office is
convinced that there is no likelihood to cause confusion by
both companies each having the trademark for the name Dove. In other words, the
main reason Dove chocolate and Dove soap can both exist is because the
trademark office considers chocolate and soap different enough that people will
not be confused as to which company is making each. It just so happens that
chocolate and soap are in different classes, which is usually true when two
trademarks of the same name coexist, but not always.
Building
on this concept, it is possible for two people to have the same trademark and
coexist in the same class. Conversely, it is possible to apply for a trademark
that already exists in one class, but file it in a different class and get
rejected. It all comes down to whether the trademark office thinks the goods
and services that are represented by the two marks are likely to cause
confusion with buyers. For example, Coke has a trademark Coca-Cola for sodas in
class 32. Tea drinks are actually part of a different class, class 30 which is
the class for tea and coffee. If you were to apply for a trademark for
Coca-Cola in class 30 for tea, do you think you would be approved? The answer
is likely not. Because tea and soft drinks are both drinks, it is likely for
buyers to be confused if you have a trademark for Coca-Cola in class 30 and
Coke has one for class 32. If you label your tea as Coca-Cola, buyers will not
be sure whether the tea was made by you, or by Coke, and thus confused as to
who made it. In this example, even though you are applying in a different class
than an existing trademark of the same name, you are likely to be rejected. In
an example of the reverse, if you are applying for a mark in a class where
another same mark already exists, you could still get approved if you can
convince the trademark office that the goods you are selling are so different
from the goods of the other mark in the same class that there would be no
confusion to buyers. However, this is generally difficult since the trademark
class system has been designed so that similar products and services are put
into the same class.
So let’s
think strategy. Let’s say you start a company called Widget and you will sell
sodas and teas. You want to prevent others from also selling sodas and teas by
the name of Widget. Should you apply for sodas in class 32 or teas in class 30?
The answer, is for best protection you should apply for both. If you have one
trademark for sodas in class 32 and another for teas in class 30, you ensure
that both teas and sodas are covered. Filing in both classes, however, requires
double the fees. The trademark office charges for each different class you file
in. You may say well let me just file in class 32 for sodas only, I should be
fine since you said earlier if someone else files for the same name in class 30
for teas they likely would be rejected by the trademark office since teas and
sodas are so similar. This may be true, but do you want to risk it? If someone
can make a convincing argument to the trademark office that the teas they sell
will not cause buyers to be confused with the sodas you sell, they may get the
trademark for teas in class 30. Therefore, to be safe, the best way is to file
for both class 32 and class 30, and pay double the fees needed to do so. This
is how the major corporations do it. They will cover many classes to ensure
that people cannot use their trademark name on practically any good or service.
As of this writing, Coke has 61 trademarks for Coca-Cola and similar
variations, spanning multiple classes.
There
are 45 total trademark classes. When you apply for a trademark application, you will indicate what goods and services your
trademark will represent. The trademark office will then compare your trademark
to similar trademarks and make a subjective decision as to whether your mark
and what it represents is likely to cause confusion with another mark and what
that mark represents. If the trademark office thinks there is no likelihood to
cause confusion, they will approve. otherwise, they will reject and you have an
opportunity to argue back for approval. There is no guarantee that a trademark
application will be approved as whether you are likely to cause confusion with
another mark is a subjective determination made by an examiner at the trademark
office. This is true even if nobody has the exact same name you are applying
for. The only way to get a trademark is to apply and wait for a decision by the
trademark office. To maximize your chances of approval, however, you should
apply for trademarks that are as different from existing trademarks as
possible, and list goods and services that are as different as possible from
the goods and services of existing trademarks. You also don’t get your money
back if your application is rejected or filed improperly, so best file it
properly the first time around.
How ANT Lawyers Could Help Your Business?
To learn more about ANT Lawyers IP Practice or contact
our Trademark lawyers in Vietnam for
advice via email ant@antlawyers.vn or call our office at
(+84) 24 32 23 27 71
.jpg)
