This article is for informational purposes only. It should not be construed as legal advice for any individual matter, nor does it create an attorney-client relationship between you and the author or the publisher. This article discusses concepts and methods applicable to U.S. law and may differ in other jurisdictions.
When conceiving a new brand name, running comprehensive searches and clearance is crucial to ensure that a proposed name is viable and available for use. This process requires comparing not only the words themselves with other existing names, but also a number of other pieces that make up the anatomy of a trademark. One such piece worth a deeper dive is the International Class designation. This article discusses what the International Class system is, where it comes from, why it’s important and how to use it to build better brands.
The International Class system is a catalog of all of the goods and services that exist in the world. The system stems from an international trademark treaty called the Nice Agreement, signed in 1952 and updated every five years by its administrator, the World Intellectual Property Organization (WIPO). Most major global business jurisdictions, including the United States, have adopted the Nice Agreement’s International Class system. Currently, the Nice Classification contains 45 International Classes (“ICs”); ICs 001–034 represent classes of goods, while ICs 035–045 cover classes of services.
To get a perspective of how this appears in practice, below is part of the registration record of one of the world’s most famous trademarks: the original COCA-COLA registration. In the second line, “Goods and Services,” you’ll see the magic number: IC 032. This code signals that this registration is in that class, which corresponds to Light Beverages—as distinct from IC 033, for various wines and spirits; IC 030, for sugar and candies; or IC 021, for glass bottles.
However, if you remember only one thing from this article, make it this: International Classes are guardrails, not walls. Just because a proposed mark is not in the same IC as a senior mark (that is, a previously registered or applied-for mark) does not mean no conflict exists between them; likewise, just because a proposed mark is in the same IC as a senior mark does not mean a conflict does exist between them. The identification of goods and services—above, “beverages and syrups for the manufacture of such beverages”—is the anchor here, the piece that your examiner at the U.S. Patent and Trademark Office (USPTO) will review to determine whether a proposed mark is registrable. This is because the touchstone principle when evaluating whether a mark is registrable is a “likelihood of confusion,” i.e., that consumers looking for products bearing a previously existing mark will mistakenly purchase or use products bearing a new mark.
However, the classifications found in the Nice Agreement are so broad that there may not be a real risk of consumer confusion between goods and services in the same class. For example, personal accounting services and real estate commercial property management services are both in IC 036. Typewriters and playing cards are both in IC 016. Because the same consumers would not expect to purchase or use both of these goods/services from the same source, neither of these pairs, on their own, are likely to cause confusion. So, while the IC system is our guardrail, the identification of goods and services is the roadway.
While the International Class system is our guardrail, the identification of goods and services is the roadway.”
To put these concepts in practice, let’s use our example above: a hypothetical startup distillery’s application for the mark COCA-COLA, in IC 033, for a cola-flavored whiskey would likely not be registrable due to a likelihood of confusion with this senior registration, even though it would not identify the same IC 032 goods. This is because the identification of goods—”beverages and syrups” and “cola-flavored whiskey”—would be too similar to use the exact same mark. Consumers of the boozy COCA-COLA would likely and mistakenly assume that the same company produced both the soft drink and the hard beverage, which would constitute the likelihood of confusion required to reject a new application.
Takeaway: When seeking to determine if a prospective mark is registrable, use the International Class system as a starting point to identify potential conflicts, not as the conclusive factor.
FINDING POTENTIAL CONFLICTS IN OTHER CLASSES
Louder, for those in the back: International Classes are guardrails, not walls. While anyone searching the USPTO’s database can restrict a search for marks within a given International Class, searches by IC don’t always provide a comprehensive list of marks that could pose risks to rejection of a proposed mark. A crucial component to a successful search is constructing searches that will return all results relevant to greenlighting a mark. If a mark is intended to identify goods and services in a certain class, it’s a good idea to add in other companion classes—classes that the examiner is likely to search in connection with a proposed mark. This can occur in one of two ways: either due to the inherent nature of a particular class, or based on the identification of goods and services.
A crucial component to a successful search is constructing searches that will return all results relevant to greenlighting a mark.”
Some products by their nature implicate goods and services in other classes. Some examples of these companion classes include beer (IC 032) and wines (IC 033) or downloadable software (IC 009) and non-downloadable software or SaaS/PaaS services (IC 042). If a proposed mark will fall into one of these product identifications, a search should include the companion classes to evaluate whether any marks registered in those classes could pose a likelihood of confusion. Even without memorizing each IC by heart, using the USPTO’s ID Manual, discussed below, can show where goods and services may cross the barrier into new International Classes.
Likewise, some classes don’t inherently trigger a risk of cross-class confusion, but services within them could—especially when the companion classes signify services that involve the provision or retail of products that fall into other classes. For instance, if a mark will cover software platforms for providing automobile insurance quotes (IC 042), a search for that mark should include marks for automobile insurance itself (IC 036) and downloadable software relating to automobile insurance (IC 009). Likewise, retail services for various products like jewelry, clothing, and housewares would fall into IC 035 (advertising and business services), but a good search for the proposed mark would also include IC 014 (jewelry), IC 021 (housewares), and IC 025 (clothing). Practice makes perfect in constructing these searches, so an experienced trademark attorney can help to build the parameters and analyze the results.
Takeaway: A thorough review of a mark’s goods and services and clever search construction will help to provide a comprehensive list of all senior marks that could affect an application for the mark, so don’t rely on International Classes as the alpha and omega of trademark searching.
USING THE USPTO’S ID MANUAL TO IDENTIFY CLASSES
To identify which ICs a prospective mark may fall into, use the chart at the bottom of this post for broad parameters or, for more precision, employ the USPTO’s Trademark ID Manual. Continuing with our COCA-COLA example, let’s say we want to know whether marks for a similar “beverages and syrups for the manufacture of such beverages” are available. To build a search, you would first need to identify which classes to search in. Looking at the chart of ICs, you would see that IC 032 (light beverages) is likely the primary class to consider. But are there companion classes we should think about?
The images below represent search results aimed at identifying which classes a proposed mark for “beverages and syrups” could fall into. The ID Manual’s entries generally correspond to entries available in the USPTO’s application platform.
A search for “beverages” reveals 340 results across many different classes. The Notes column provides background history on whether various IDs have moved classes over the years. Entries that are crossed out and have a “D” status generally are not available options for an application, usually because they don’t properly identify the corresponding goods or services.
Each column is sortable; clicking on the Class column allows a searcher to reorganize the column by International Class.
Adding additional search terms, such as “syrup,” will refine search results to a small list, like the 16 results across 3 classes shown here.
While our mark for beverages and syrups is likely to fall into IC 032, the ID Manual shows us that we should also include IC 030 (staple foods, including sugar-based foods) when searching to capture any relevant results.
Takeaway: Use the Trademark ID Manual as a guide to evaluate classes that could be implicated by your goods and services.
FIVE MORE CONSIDERATIONS FOR INTERNATIONAL CLASSES
- Certain classes are much more saturated than others. For instance, ICs 009 (scientific and electronic products, including some software), 025 (clothing), 035 (business services), and 042 (scientific and computer services, also including some software) all cover extremely broad sets of goods and services, where many common words have been used, often multiple times. In these and other broad classes, pay extra attention to the precise identification of the goods and services.
- Other classes may not have as broad a set of goods or services, but the nature of the businesses tied to them makes finding trademark white space a challenge. Class 032, particularly for goods related to beer, is one good example. The explosion of craft breweries over the last 20 years, each with its own set of multiple branded product lines, creates an extremely crowded field that is notoriously rife with trademark challenges. To quantify it, the USPTO currently shows more than 31,000 live marks for something involving “beer” in IC 032, but only 21,000 live marks in all of IC 002, for paints. Plenty of other such quagmires exist, so take your time and do your diligence as early as possible to save headaches later on.
- The ultimate arbiter for whether a mark is registrable is a complex mesh of the USPTO’s examiners, the Trademark Trial and Appeal Board, and the federal courts that hear infringement disputes. Attorneys can use precedential decisions and prosecution history of other marks to identify patterns of ICs where coexisting registrations may be possible or impermissible. This is not a DIY kind of thing; if you uncover a history of conflicts related to a proposed mark, consult your attorney for advice and direction.
- For certain goods and services, the ultimate purpose of the item is what will determine the IC, rather than its composition. For instance, plastic bags can fall into IC 010 (plastic bags for transporting medical specimens), IC 016 (plastic bags for wrapping), IC 021 (plastic bags for storage), or IC 022 (plastic bags for storing ice). This can be confusing, but the ID Manual and an experienced trademark attorney are your friends here.
- Finally, International Classes also come into play in another, more practical way: the U.S. Patent and Trademark Office charges filing fees based on the number of different ICs included in the application. Applications may include as many individual goods or services within a class for a single filing fee, but each new class brings its own filing fee. Most other filings that require a fee, such as extensions to request time to file statements of use or post-registration maintenance and renewal filings, will be multiplied by the number of classes in the application as well.
Takeaway: Fully flesh out all goods and services that will be offered under a prospective mark, which will ensure that trademark searches will capture the breadth of the mark’s putative use. However, know that expanding into new classes will add to the overall filing and maintenance costs of an application and registration.
CHART OF INTERNATIONAL CLASSES
|IC||Category of Goods or Services||Notes|
|1||Chemicals||Generally reserved for raw or unprocessed/industrial materials.|
|3||Cosmetics and Cleaning Preparations||A very broad class for creams, liquids, lotions, gels, etc., not necessarily for the items that apply them. Many products have companions in IC 005.|
|4||Lubricants and Fuels|
|5||Pharmaceuticals||A very broad class for medicated or disinfectant creams, liquids, lotions, gels, etc., not necessarily for the items that apply them. Many products have companions in IC 003.|
|6||Metal Goods (except Precious Metals)|
|9||Electronic and Scientific Apparatus||A very broad class. Pay special attention to identification of goods here.|
|10||Medical Apparatus||Some products in this class have companions in IC 005.|
|11||Environmental Control Apparatus (includes Equipment for Lighting, Heating, Cooling)|
|12||Vehicles and Parts for Them|
|14||Jewelry and Precious Metals||USPTO may request additional evidence to prove that goods in this class are actually made of the precious material.|
|16||Paper Goods and Printed Matter (includes Artists’ Materials)||A fairly broad class that branches off into a few different areas.|
|18||Leather Goods||Some leather goods will fall into other classes, such as leather jackets (clothing, IC 025).|
|19||Nonmetallic Building Materials|
|20||Furniture and Articles Not Otherwise Classified||“Articles Not Otherwise Classified” here refers to building materials, housewares and other furniture-related items of wood, cork, wicker, bone, etc.|
|21||Housewares and Glass|
|22||Cordage and Fibers||Generally for raw textile products.|
|23||Yarns and Threads|
|24||Fabrics (includes Textiles Not Otherwise Classified)||Generally for finished textile products.|
|25||Clothing||Includes footwear and headware, even if made from items in other classes.|
|26||Fancy Goods (includes Lace, Ribbons, Pins, Needles, Buttons, etc.)|
|27||Floor Coverings (includes Wall Hangings)|
|28||Toys and Sporting Goods||Toy vehicles fall in here rather than in IC 012.|
|29||Meats and Processed Foods||“Processed foods” refers to such foods that don’t fall into other classes, but this can be tricky. For example, fruit jellies and jams live here, even though the fruits and sugars that comprise them live in other ICs.|
|30||Staple Foods (includes Coffee, Tea, Sugar, Flour, Salt, Spices, etc.)||Check for companion goods in ICs 029 and 031.|
|31||Natural Agricultural Products (includes Fruits and Vegetables)||Check for companion goods in ICs 029 and 030.|
|32||Light Beverages (includes Beer, Water and other Soft Drinks)||Check for companion goods in ICs 030 and 033.|
|33||Wine and Spirits||Extremely crowded class.|
|34||Smokers’ Articles||Includes matches, but not candles or wicks. Go figure.|
|35||Advertising and Business Services||Very broad class. For retail services, cross-check with the classes of corresponding goods and services sold.|
|36||Insurance and Financial Services||Very broad class. Real estate services fall in here.|
|37||Building Construction and Repair Services|
|38||Telecommunications Services||By “telecommunications,” we mean the actual broadcasting, streaming, and other audiovisual services. Some companions in IC 041 and 042, with some tricky barriers to navigate.|
|39||Transportation and Storage Services|
|40||Treatment of Materials||Depending on what materials you’re treating, this could have companions in ICs 006, 017, 018, 019, 020, 024, and more.|
|41||Education and Entertainment Services||Extremely broad class. Pay special attention to definitions of services here.|
|42||Computer and Scientific Services (includes Nondownloadable Software)||Extremely broad class. IC 009 is a nearly automatic companion, but plenty others may lurk beneath the surface as well. Pay special attention to definitions of services here.|
|43||Hotels and Restaurants (includes all Hospitality Services)||Very broad class, particularly tricky when dealing with breweries/distilleries because of crossover with ICs 032 and 033, or restaurants that sell particular food products in ICs 029, 030, and 031.|
|44||Medical, Beauty and Agricultural Services||Many companions with goods in ICs 003, 005, 010.|
|45||Personal Services (includes Legal, Security and Social Services)|
Perry Gattegno is a partner at Litwin Law in Chicago, where he leads the firm’s Trademarks and Branding Practice. He focuses on trademark prosecution and intellectual property strategy, and he collaborates with clients on projects in branding, naming and identity. A recovering journalist, he retains a soft spot for a good story. He likes short sentences and hates legalese.