Last updated on December 14th, 2018
The United States Patent and Trademark Office (USPTO) divides trademarks into 45 classes. Each class represents a specific category of products, goods, or services.
This article will cover Trademark Service Class 35, which includes services relating to advertising and business.
Registering a Class 35 Trademark
If you’re starting a new business, it’s important to register the intellectual properties associated with that business as trademarks. Any distinctive name, slogan, symbol, service or product can be registered as a trademark.
Trademarks legally prevent other businesses from imitating your brand. However, trademarks only apply to intellectual properties in the same class.
Thus, two companies with the same name can exist, but only so long as the trademarks aren’t registered in the same trademark class.
You’ll be asked to list which class your trademark belongs to when you submit your trademark application. You can list any classes to which your service belongs, or in which you intend for it to belong.
What is a Class 35 Trademark?
By registering your trademark under Class 35, you’re stating two things:
- Your intellectual property relates to a service.
- That service is intended for businesses and professionals.
These guidelines are intentionally broad. Here are a few examples of the types of services covered under Class 35:
Almost anything relating to advertising is a Class 35 trademark.
This includes PR firms, marketing services, ad design, ad publishing, ad distribution, and pretty much any service intended to promote a product or business.
If your business publishes advertisements, you might consider registering your trademarks under Class 41 (Education and Entertainment) as well. Market research companies might also qualify for Class 42 (Computer and Scientific) trademarks.
Intellectual Properties belonging to HR firms are almost always Class 35 trademarks. This includes everything from recruitment websites to payroll services.
Data Processing, Bookkeeping, and Clerical Services
Class 35 also covers companies that process data, audit accounts, and directly handle information for pay.
If your company produces software to do this, that software could be a Class 9 (Electrical and Scientific Apparatus) product instead.
Remember, Class 35 only applies to services, not products.
Office Services and Supplies
Certain wholesaling services are classified as Class 35 services instead of products.
Basically, if there’s nothing distinctive about your wholesale product (medical supplies, for example), your business is probably a Class 35 service.
Any type of consulting, advising, relocation, construction, or telephone answering service can be a Class 35 if your only customers are businesses.
What is Not Covered under Class 35?
It’s common for intellectual property owners to apply for a Class 35 trademark when they really need another class.
In general, this type of mistake happens for one of two reasons:
It Infringes on Existing Trademarks
You won’t be able to get a trademark if there’s a similar Intellectual Property filed under the same class.
Fortunately, you can search USPTO’s database yourself to quickly check if your potential trademark is already being used. Before filing, it’s common to hire an attorney to perform a comprehensive trademark search and review the results.
If you aren’t sure whether your trademark will infringe on one already in the database, you’ll need to talk to your lawyer or file under a different class.
USPTO does not advise individuals on the availability of trademarks before they submit their application.
Using Intellectual Properties Relating to Goods
You can only register an intellectual property relating to a service as a Class 35 trademark.
For example, if your company produces software to help manage businesses, payroll, and the like, you may need to file under a different trademark class.
The same applies for companies who produce brand-specific clothing or other consumer goods. The fact that you produce your product on demand is not sufficient to place it in the “service” category.
Services in Other Categories
Because its guidelines are so broad, USPTO scrutinizes the services in the Class 35 trademark category more carefully than others.
It’s also more likely that another business has already trademarked a similar concept. For that reason, it’s often better to apply to a more specialized class when possible.
For example, educational services targeted towards businesses should apply for a Class 41 (Education and Entertainment) trademark, either exclusively or in addition to a Class 35 trademark.
What does a Trademark Do?
Once you’ve registered for a class 35 trademark, you can use it to fight trademark infringement. In fact, you have to, because you can lose your trademark if you fail to defend it.
Consistent failure to defend against possible infringement is considered abandoning your trademark.
On the plus side, holding a registered trademark can prevent “unfair competition,” a term that includes imitations, knock-offs, and other types of unauthorized selling. This can also include malicious imitation of a website or brand name.
In general, there has to be potential for actual confusion to claim trademark infringement. However, many companies still attempt to defend their trademarks in cases where
Certain types of trademark use are considered fair use, despite being unauthorized. This means that the other party is acting in a legal manner not likely to result in confusion of your trademark with theirs.
Claiming that one service is superior to another is an example of a fair use (“nominative use,” to be specific.)
Likewise, parodies are also usually fair use.
When it comes to registering for a Class 35 trademark, your best bet is to do research beforehand. A thorough search of USPTO’s database can save you major headaches down the road, as well as talking your potential trademark registration over with a lawyer.
Remember that protecting against trademark infringement is an ongoing, sometimes time-consuming process. An experienced trademark lawyer can make it easier to protect your intellectual property at minimal expense to your company.