Can i register a trademark in a different class [Glossary]

Last updated : Sept 12, 2022
Written by : Hassan Cloos
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Can i register a trademark in a different class

Can you add a class to an existing trademark?

It is not possible to add a class or other products to an already registered trademark. It will be necessary to proceed with a second trademark registration with an increase of costs.

Can I use a the same name in a different class of trademark?

However, if the two products are not related to one another and not likely to cause any confusion, then trademark law will not prevent the two companies from using the same name. Put differently, if the same name is registered in different trademark classes, this does not give rise to an infringement claim.

Can you trademark the same name in a different class in India?

It goes without saying that confusion and trademark conflicts are bound to arise when the trademark names of different business entities are the same or sound similar in the same class. However, if the names only sound alike but aren't spelled alike, they can be in the same class without issues.

What is multi class trademark?

A trademark owner can file a single trademark application for the registration of a trademark under multiple classes. For multiclass trademark registration, a trademark owner/company can mention all the classes in the same application (Form TM-A).

How do I add more classes to my trademark?

Adding a class to a registered trade mark However, once you've registered your mark, you can't expand the scope of protection - you can't add extra classes or alter the representation of the mark (eg change your logo). You may need to file a new registration to protect your existing trade mark under different classes.

How many classes can you register a trademark?

The trademark is registered based on types of goods and services. In accordance with the NICE Classification, all types of goods and services are classified into 45 classes. To register the brand under the trademark, one must know the correct class of trademark.

Can there be 2 trademarks with the same name?

The short answer is, “it depends.” It depends on (1) Whether the other business is in the same industry; (2) Whether the other business is in the same geographical market; (3) Who was using the mark first; and (4) Who registered the trademark first.

Can a trademark be used twice?

If you began using the name before the other company registered it, you will be able to continue using it. However, you will only be able to use it in the market in which you were using the mark when the other company registered the name.

Can you have two trademarks in the same class?

Yes. The international classification system adopted by our federal Trademark Office is used solely for procedural reasons and does NOT reflect any conclusions of law as to whether the goods or service in one particular class are "related" to each other for registration -- or infringement -- purposes.

What happens if someone uses my trademark?

If the person or entity receives your letter and continues to use your trademark, it's time to file a lawsuit. The suit will get filed in federal court if it spans more than one state. If the infringement is local, it may get filed in a state court.

Can I trademark a name already in use but not trademarked?

1. Can You File for a Trademark That Exists? Updated November 12, 2020: If you're wondering, "can you trademark something that already exists," the simple answer is "no." Generally speaking, if somebody has used a trademark before you, you can't register the trademark for yourself.

Can you modify a trademark?

If it can't be processed in time, your trademark will be published as is. However, after your trademark is registered, you can request changes by filing a Section 7 Request for Amendment or Correction of Registration Certificate form.

Can you add a logo to an existing trademark?

You may be able to amend your national U.S. trademark registration to cover the most current version of your logo, so long as the new logo isn't a “material alteration” of the original registered logo. This allows you to preserve your original priority date that is associated with your old registration!

What is a Class 35 trademark?

Trademark Class 35 is a service category that includes a range of business and professional services. Most of the included services help with carrying out, managing, or advertising a commercial or industrial enterprise.

How many trademark classes do I need?

The USPTO trademark classification system divides all goods and services into 45 trademark classes – 34 for goods and 11 for services. There are many goods or services that fall into each class, and they're not always obvious from the class name.

Why are the classes in TM important?

Registering your trade mark under a specific class prevents someone from registering the same or similar trade mark within the same class. This stops someone who is selling the same products or services having the same/similar trade mark as you.

Can a single trademark application cover multiple trademarks?

It should come as no surprise that one trademark application can cover only one mark. In other words, you may not register multiple trademarks in a single application.

Can I trademark a phrase already used?

Trademarked phrases are only protected against the use of others in the same business class. The phrase must identify the commercial organization as the source of goods or services for the trademark. You cannot apply to trademark a phrase if the same phrase is already registered or has a pending application.

Can a company sue you for having the same name?

Trademark Registration Then, the owner can face a lawsuit for using the same name as someone else even if the second party registered a trademark for the company after the first owner created the company. These situations usually require the services of a lawyer to both understand and pursue.

How long does a trademark last?

A federal trademark lasts 10 years from the date of registration, with 10-year renewal terms. Between the fifth and sixth year after the registration date, the registrant must file an affidavit to state that the mark is still in use.

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Can i register a trademark in a different class

Comment by Mary Bloomgren

a client calls me says he wants to trademark a brand he knows it's being used by another company but it's in a different category one of those categories you reflect in your application to the USPTO the trademark office of the US government anything very early on you have to keep in mind that while you're filling out a trademark application you have to indicate the category in which your brand is working meaning if you are using that specific brand for clothing retail you need to indicate that that's not the same as saying that your brand is limited to that one category and everybody else can choose any other category they want to still use your brand why it's because the basis of trademark infringement is consumer confusion it's nothing to do with categories if a consumer will be confused but the usage of if that your brand in a different category but will be confused as to the source of that brand meaning they will think it's your brand that's going to be a problem so while the application demanded and while the application says that if you want to choose multiple categories you've got to pay for those multiple categories your brand your usage of that trademark for that Brian is not really going to be limited only to that category so when it comes to trademark infringement where they're looking at whether or not you've infringe on somebody else's trademarks they're not only going to be concerned with whether or not you are the same category they're going to look at whether or not you're in logical categories that other applicants would logically be involved in so while somebody might have an application with a specific category like a retail clothing his brand might still get protection in wholesale you might get some protection in related items like outside of clothing like home goods or house products or maybe some electronics depending on what's common in that industry and what other kind of manufacturers and retailers have been involved in so when looking at your trademark and noticing that somebody else may have a trademark in it another kind of category always ask yourself if you were to present this to the market to the consumer it is likely that the consumer will be confused by that mark thinking that your product your mark with your product might be related to products associated with the other come trademarks are not about exactly it's about confusion about whether or not the consumer be confused after the source as to the manufacturer as the retailers whoever providing that one product to always look at it from the side of the consumer so is your brand going to be confused with somebody else's brand because even though they're in different categories they have the exact same name if you have any questions any concerns any issues you want to discuss just leaving down below I'd love to talk see you next time

Thanks for your comment Mary Bloomgren, have a nice day.
- Hassan Cloos, Staff Member

Comment by vakanaw

trademark classes now we should talk a little bit about the classes of goods and services that you can file a trademark in when you file a trademark application one of the first things we do when working with clients on their trademark application is understanding what goods or services they are offering the reason this is important is because the rights you receive in a trademark are limited to the specific goods or services you offer in other words the list of the goods and services is an important aspect of the trademark application as the scope of the applicant's rights in the trademark is defined and limited by the scope of the classes that you list in your application this list is also known as the specification what this means to you in practical terms is that when you're filing your trademark application we have to select different categories called classes of goods and services for the trademark essentially every good and services known to mankind has been divided into forty five different classes by the International classification system established by the nice agreement concerning the International classification of goods and services for the purposes of registration of marks an international treaty consummated on the 15th of June 1957 in Nice France the nice agreement is open to states who are parties to the Paris Convention for the protection of industrial property in total the nice classification system contains around 10,000 indications of goods and 1,000 indications of services the advantage of having classes is that you can have very similar even identical trademarks in different industries which do not result in the end-user being confused for example you have Dove chocolate and Dove soap you've got Delta Airlines and Delta faucets and there's a lot of other Delta's out there as well the reason these trademarks can coexist is because there are vastly different markets if I'm in the market to buy a body soap I'm not going to confuse that with the name of a chocolate maker now there are always exceptions every rule but in general the rule is that if a trademark is in a different line of business or a different channel trait even if it's identical to a pre-existing trademark they can co-exist an obvious exception would be trademarks that are defined for the Paris Convention to have become well-known like Nike or coca-cola you can't go make coca-cola soap without confusing and users as everybody knows coca-cola it's just not gonna happen the classes are number 1 through 45 classes 1 to 34 related Goods and classes 35 to 45 relate to services now let's say you're selling clothing sunglasses in purses those actually fall into three different categories clothing is class 25 purses would be class 18 and sunglasses in class 9 the significance to you is that the trademark offices filing fees are computed based on how many classes and you are filing now some countries allow you a single fee for up to three classes others charge by class and the final filing costs will be multiplied by as many classes as you're trying to register so if filing one trade back in one class costs two hundred and forty dollars now you will be paying seven hundred and twenty dollars to file a trademark application in three separate classes now this is where small business owners have to be very careful about their strategy for registering a trademark and how many classes they actually want to include when filing a trademark as the cost can raise very quickly so at the end of the day we're trying to figure out what goods or services are we offering what are the applicable classes and then what strategy do we want to take do we have the budget to apply for classes that are only tangential and not really critical to our business or do we need to register in less classes to keep the cost within budget another important aspect of using classes is the ability to exclude classes when there is a conflict with another similar trademark when an examiner rejects your trademark because it is descriptive of its goods for services for example when you need to overcome an Chinn for an opposition based on the likelihood of confusion you can decide to exclude certain classes of goods and services that are similar to that of the similar trademark in order to overcome that objection an applicant may also restrict his specification nor to overcome an objection made under absolute grounds where the trademark is found to be descriptive by using restrictions and positive or negative terms such as alcoholic beverages consisting of vodka rum or alcoholic beverages none of which being whiskey or gin you may be able to overcome a refusal for an opposition citing an earlier trademark that already covers whiskey and gin beverages please feel free to watch more of our videos to get valuable insights but the mechanics of applying for trademark registrations defending your marks opposing other conflicting Mart's dealing with office actions and many other intellectual property issues my name is jonathan morton and i have a licensed US attorney and a member of the trade markers network don't forget to subscribe

Thanks vakanaw your participation is very much appreciated
- Hassan Cloos

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