Tuesday, September 22, 2009

Trademark International Class: Class 35 (Advertising and Business Services)
All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 35.

What is International Class 35 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 35's short title is advertising and business services. Pretty vague, eh? The USPTO has 1476 accepted descriptions that fit into IC 35; check them out here.

The first part of IC 35’s description, advertising, is straightforward. If it’s advertising, marketing or promoting services that are being offered, then IC 35 is where it goes. Now there are going to be some exceptions, as with anything related to trademarks.
Tangible advertising goods, such as signs, flyers, brochures, are NOT going to be in IC 35 as those items are not technically a service though are definitely part of a service; tangible paper-based advertising goods are in IC 16. Training, coaching, educating, etc. about advertising, marketing or promotion is NOT going to be in IC 35 but rather in IC 41, which is the educational class.

The second part of IC 35’s description, business services, is not straightforward at all. Semantically, all services could be considered as business services, yes? No way says the trademark powers that be; at least no way if those services can fit within a different international classification.

So What Business Services are in International Class 35?

Ooh this is a tough nut to crack as there are definitely some discernible patterns within this class but there’s a whole lot of slap-dash in here too. Here’s a general breakdown:

• If your services consist, in part, of the word business, you’re likely in IC 35. This includes consulting, advising, administration, management, development, information, organization, research, planning, etc.

• Employment services are in this class, which includes hiring, recruiting, placement, staffing and career networking.

• Retail services selling ANY products under the sun, which means a brick and mortar store, online retail sites, mail order, catalog, wholesale, etc.

Obviously there’s a whole host of other services in IC 35. If you’re wondering about your services, feel free to
email me.

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trademark registration said...

IC-35 seemed confusing initially but after I read this post twice now it became much easier to me. Thanks for summary.

- Vincent

Shannon Moore said...

You're so welcome Vincent!

My apologies for not writing you back sooner, I never received this comment in my email.

If I can help you with any other IC 35 questions, let me know.

Thanks again!

-- Shannon

Alex said...
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Boris said...
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Jai said...

How to register a trademark under section class 35..?

Shannon Moore said...

Hi Jai,

Thank you for reading & for commenting! To register a trademark for IC 35, the first step is the research to make sure the name is clear. Then, if clear, the name is filed with the USPTO. Each situation is different so if you'd like a free consultation, please call us at 800-776-0530 or email at staff@tmexpress.com

Thanks again!

-- Shannon

Dentist Seo said...
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navya said...
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Alex said...
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K Dawdy said...

If you answer a telephone using part of a phrase listed in a service mark in this class would that be classified as infringment?

Shannon Moore said...

Hi K Dawdy,

Thank you for your question! Without knowing more details, it's hard to say. Each situation is different so if you'd like a free consultation, please call us at 800-776-0530 or email at staff@tmexpress.com

Suresh Pirsquare said...

can i have 2 retail services to be running under one class i.e. 35.
for eg:- if a grocery store "ABC Store" selling grocery products is registered under retail services(Retail delicatessen services), can i still register electronic store "ABC Electronics" selling electronic products online under the same class i.e. 35.

Shannon Moore said...

Hi Suresh,

Thank you for your question! Yes, you can register the SAME name in one class for multiple services. In your example, the mark would have to be ABC for retail delicatessen services and on-line retail services in the field of electronics. You couldn't have 2 different names (like in your example) on one application. Hope this helps! If you have any other questions, please email me at staff@tmexpress.com or give us a ring at 800-776-0530. Thank you!

Anonymous said...

Hi Shannon,

The blog post is a few years old, but still very useful. Thank you for the explanation!

I have a question where the easiest way to explain the situation is with an example. Assume my company name is "CarHeroes" with matching registered domain. Company is online community of professional/certified race car drivers. In marketing material the company is referred to as "CarHeroes" while a member of the site is called a "Car Hero" and a group of members are called "Car Heroes". Which one(s) should we trademark to be fully protected?

1) CarHeroes
2) Car Heroes
3) Car Hero

To add another wrinkle to the mix, "Car Hero" is trademarked under US Class Codes 022, 039 with Primary Class Clothing, footwear, headgear. Under Goods and services it says "Sporting goods, namely blowgun, blow pipe, and blowgun that uses safe projectiles made of soft plastic", which is not related to an online community at all.

Thank you.

Shannon Moore said...

Hello Anonymous!

Thank you for reading and for taking time to comment.

You'll want to file the name as you use it in conducting business. Without knowing further details or seeing how the marks are presented, it's hard to say for sure. You're welcome to give us a ring at 800-776-0530 for further guidance. The way you describe it I would venture to guess you'll likely want to trademark CarHeroes. But again, further information is needed to say for sure.

You're absolutely right; the other mark you mention is not related. The USPTO looks at common industries/products as well as similarities in Sound, Appearance, or Meaning (aka SAM). You can read more about SAM here: http://tmexpress.blogspot.com/search/label/trademark%20similarity

Please let me know if you have any further questions. And again, give us a ring and we can fully answer your questions. Thanks again


Deidre Miles said...

Thank you for helping to clear some things up for me!

We've started a Customer Service Training company. Let's just imagine we want to trademark the name "Super Service" as our training technique. The word Super is already trademarked under U.S. Class 35 as a marketing video-making company.

Question #1: Can I register under Class 35 with the Service Mark "Super Service", even though the word Super is already trademarked under that class?

Question #2:I cannot find anywhere that the company that owns the term Super, is, or has ever, sold a product or service using the term. They don't seem to be active at all. Does this give me any leverage in getting registered under U.S. Class 35?

Question #3: Since we'll be training businesses in customer service, could I register the name under U.S. Class 41? It sounded like from your article that it might work? We might also be doing some consulting as well.

We also own the URL www.SuperService.com, but aren't sure if we should use it or come up with a different name altogether.

Thanks for any help you can give!


Shannon Moore said...

Hi Dee,

Thank you for taking the time to read & to comment!

I'd need to look at the exact record to better judge if it's something we'd deem a conflict or not. Feel free to email me the Serial Number (should start with a 7 or an 8) to staff at tmexpress dot com and I can give you a better idea. Or leave it here & I'll comment again.

Same or similar names can be filed in the same class; however, if there's a possibility for customer confusion then that's where it can get dicey.

Yes, in order to retain trademark rights the mark must remain actively in use. There are steps you can take, with a trademark attorney, to dispute the filing.

Correct, if you are offering educational/training services that is class 41. The actual customer service consulting would be in class 35.

If you have any other questions, please email me at staff at tmexpress dot com or give us a ring at 800-776-0530. Thank you!