Trademark Misclassification of Goods or Services

When a trademark applicant misclassifies goods or services in their trademark application, the trademark examining attorney will issue an Office Action delaying the whole application process.

 

When everything goes right, the trademark application process takes anywhere from nine months to one year. Any Office Action issued by the trademark examining attorney can delay the process months and add additional costs if an attorney that filed the application charges additional costs to replying to Office Actions (Granite Trademark Services does not charge additional fees to respond to Office Actions).

 

One of the most common Office Actions, especially when trademark owners file applications pro se (i.e. without a trademark attorney), is for misclassifying goods or services. When filing a trademark application, the trademark owner, or their trademark counsel, must classify each good or service into one of the forty five International Classes of goods and services outlined in the Nice Agreement and accepted by the United States Patent and Trademark Office (USPTO).

 

For example, t-shirts are in Class 25 of goods, and beer is in Class 32 of goods. If a trademark applicant applied for an application for t-shirts, but listed t-shirts as a Class 32 good, the Examining Attorney will issue an Office Action. The more Classes in a trademark application, the more likely an Office Action will be issued. 

 

Trademark Office Action issued for improper identification of Goods

 

Trademark applicants, and trademark attorneys, should do their best to avoid Office Actions because they can delay the already long trademark application process by months or more. One of the easiest Office Actions to avoid is an action issued based on misidentification of goods or services. To avoid an Office Action for misidentification of goods or services, trademark applicants can search the Acceptable Identification of Goods and Services Manual (ID Manual) on the USPTO website and see where their goods or services belong.

 

 A search for “notebooks” reveals notebooks belong in Class 16 of Goods and Services

 

Another way to look up what Class of Goods or Services belong in is to look up trademark registrations of competitors in the Trademark Electronic Search System (TESS) or on Trademark Status and Document Retrieval, if you know the trademark registration or serial number (TSDR). Or you can even search TESS specifically for goods and services to see how successful trademark registrants classified the same goods or services.

 

Search for “notebooks” in the goods and services identification reveals thousands of registered trademarks. By looking what class trademark registrations classified “notebooks” will help applicants avoid potential Office Actions.

 

Did you receive an Office Action for misclassification of Goods and/or Services? Check out our Response to Office Action page for our flat fee pricing to respond and for a free consultation today!

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