As a trademark attorney, one of the most common misunderstandings that I see among my clients, is the confusion between Classes and ID’s. Very often, I have clients that describe their services merely as “Class 035” or confirm their goods as “Class 009” without any reference to whether or not the explicit ID properly describes what it is that they provide.
DISTINCTION BETWEEN CLASSES AND ID’S
As a primer, the USPTO requires that every trademark be categorized in two related, but not identical, ways. First is the Class, which is a series of 45 “buckets” into which various goods and services fall. For example, clothing is Class 025, downloadable software (among other things) is Class 009, and medical devices are Class 010.
Second, and just as important is the ID, which is the explicit description of what exactly the mark is for. The USPTO is very particular about applicants properly specifying exactly what their goods and services are. For example, it is improper to simply file on Class 009: Downloadable software. Instead, the filing must actually identify the function of the software. For example, Class 009: Downloadable software for designing financial models. So, Class 009 is the Class, and “Downloadable software for designing financial models” is the ID.
PROOF OF USE IN EACH CLASS
Although the USPTO claims that Classes are a purely “procedural” categorization system, Classes are important because when providing Proof of Use of a mark in commerce, Proof of Use must only be provided for one of the distinct items in the ID. For example, a filing in “Class 009: Downloadable software for designing financial models; Sunglasses” need only show Proof of Use of the financial software or the sunglasses, not both. Just because the items happen to fall in the same class, even though they certainly appear unrelated.
That said, it is not a good idea to file a “kitchen sink” application that contains every item you can think of in a given Class, just because you are selling one item in that Class, and can therefore technically receive the mark on that basis. The reason is that such a mark would be considered fraudulently filed, which technically voids the application. The USPTO would not investigate this themselves, and would proceed as long as Proof of Use is provided on at least one item in that Class, however should a third party catch wind, they would have ammunition that they could use in a cancellation proceeding against your mark.
This danger would remain throughout the life of your mark, and it’s not a risk worth taking just to cover goods that you aren’t selling anyway. Also, remember that your attorneys cannot make false statements on your behalf, and as every trademark filing that your attorneys do on your behalf contains a statement to the accuracy of the ID, your attorneys cannot file an ID that they know to be false, nor can they effectively defend a filing that they find out was fraudulent on your part. Therefore, when helping your attorneys draft your ID’s remember: keep it simple, keep it complete, keep it honest, and you should have smooth sailing.
ANTON LEONOV, is an Associate Trademark Attorney with LegalForce RAPC. From an early age, he has been experimenting with (others may call it “breaking”) computer hardware, in an effort to get the most out of every slice of silicon. Although his “just to see what happens” overclocking days are behind him, he is still a sucker for all things tech, and loves the opportunities that his IP legal career gives him to live at the crossroads of creation and the law. He holds a BA in Economics from UC Irvine, and a JD with honors from the Sandra Day O’Connor College of Law at Arizona State University. He is admitted to practice law in Arizona.