In 1957, The World Intellectual Property (WIPO) set up the Nice Classification (NCL). This system groups goods and services together using a single classification scheme. Since the agreement covers trademarks registered in several different languages, the system facilitates searches for marks that may need translation. NCL separates business activity into 45 classes: 34 for products and 11 for services.
There is a detailed taxonomy or tree-like listing of goods and services, compiled by the European Union Intellectual Property Office (EUIPO), within each class that further differentiates categories. These entries provide greater detail but are non-binding categories. Since the use of this classification scheme is widespread and complicated, seeking professional help to conduct a trademark search is well-worth considering. USPTO and most countries worldwide have adopted the NCL protocol. There were 84 member countries3, as of January 2016, that abide by the Nice Classification agreement.
The Classification Agreement lists over 10,000 goods and 1,000 services. A new updated edition is released every five years. These editions include changes to the agreement over the five-year revision period. WIPO publishes new changes in the NCL involving specific classes annually. It released a new version on January 1, 2016. Trademark offices of countries who have adopted this agreement must include the NCL codes in their official documents.
The Nice Classification System categorizes products and services by class; you may file your trademark in one or more classes.
There are countries that allow one class per application, whilst others allow multiple classes within the same application.
The benefit of filing one application per class is that each class will have its independent process. If one class receives an objection or an opposition, the other applications/classes will not be affected. The disadvantage is that the price for various applications is higher.
Furthermore, filing a multi-class application (in the countries where this is possible) is cheaper, but there is a risk that the entire application is affected if one of the classes receives an objection or opposition.
In the first scenario, filing in more or less classes will not affect the registration probability each application. In the second scenario, if there are more classes, there is greater exposure and the chances of receiving objections or oppositions increase.
The Trademarks Office provides a certificate per application (not per class). Remember that not all countries allow a multi-class application.
Trademark classifications are necessary for the registration process but can be misleading. The 45 categories in the Nice Agreement describe in generic terms, highly nuanced areas of commerce. We recommend you begin with your core business and describe the item(s) that you produce in clear, precise terms. Once you conclude what the best category is, focus on fringe commercial activities. Add as many trademark categories as you need to help define the property rights you want to protect. Business plans typically span a variety of areas to allow flexibility in the marketplace. Choose classes that allow you to protect your long-term goals. The appropriate choice of a trademark class will not only increase the likelihood of acceptance, but also improve your ability to defend future infringement.
You can also find your class number using our Trademark Class Search tool.
When you apply for your trademark application, the classification choices depend on how you define your goods or services. Once you have a definition, find at least one classification class that covers your business definition. Consider other overlapping trademark classes that also describe your goods or services. You should also consider coordinated classes. Your choice of one or more classification categories will have a significant impact on the acceptance or rejection of your application.
You must select the correct classification to increase your probabilities of a successful trademark registration. The Trademarks Office will not reimburse fees associated to your trademark application if your trademark is rejected. Careful revision by a trademark expert, that specializes in analyzing the strength of your trademark in its selected class(es) compared to your competitors is important as the number of objections and oppositions are increasing.
You may use our Trademark Search Tool to find the class number.
2016 statistics show that there has been an 11%* increase in oppositions presented in the United States. These figures suggest that it is becoming more valuable to conduct a Trademark Comprehensive Study before filing your trademark in order to avoid possible rejections or avoid violating the rights of a previously registered trademark. The increase in litigations over the past years is a warning to the potential future litigations concerning Intellectual Property.
Statistics in the United States show that:
The most commonly requested product classes are:
- Electric/Scientific (class 9)
- Clothing/Shoes (class 25)
- Paper/Printing (class 16)
The most commonly requested service classes are:
- Publicity/Business (class 35)
- Education/Entertainment (class 41)
- Computer/Science/Legal (class 42)
Coordinated trademark classes cross over within the standard NCL class categories because they relate to one another. Most businesses diversify their activities to improve their market share. Your trademark application should reflect your activity in these associated industries to protect your brand name. Choose coordinated classes that not only refine your registration application, but allow for any potential future expansion of your commercial activities. These related classes can be used during a comprehensive trademark search to find conflicts before the submission of your application to the USPTO.
You must include the appropriate trademark class designation when you complete the registration application, because almost all Trademark Offices around the world use industrial and commercial groupings to efficiently search for potential infringement issues. These regulatory bodies and administrators need a way to differentiate the numerous trademarks used around the world. Separating marks into classes that are divided into goods and services is a simple first step in reviewing an application for a new mark. When evaluating the strengths or weaknesses of the proposed trademark, a classification system facilitates the association of "like" with "like" and thus, helps match competitors more efficiently in similar or linked industries.
Another reason behind needing to know which trademark class(es) cover your mark is for your protection. When you use the most appropriate class(es) for classification, you will compare your trademark to marks already used by competitors in your chosen markets. How does the uniqueness and distinctiveness of your mark compare to other marks? Does the trademark offer you a competitive edge regarding your brand’s message?
Using a classification system simplifies public searches of your mark by competitors in your industry and makes it easier for competitor’s to avoid any infringement issues. The USPTO's Acceptable Identification of Goods and Services Manual is one of many sources to lookup trademarks online. You need to choose a trademark class when you apply for your mark to help a trademark office notify your target audience of your mark. A trademark class helps when both researching pre-existing marks as well as searching for potential property claim to avoid future infringement issues.
If you are unaware of which class or classes offer the best protection for your goods and services, familiarize yourself with the NCL listing. We alternatively recommend ordering a professionally prepared Trademark Comprehensive Study. By opting for this, our experienced attorneys will be able to review your product or service description and match it to the most appropriate class(es). If they have any questions or need more clarification, they will contact you.
You can also find your class number by using our Trademark Class Search tool.