If you own a business that focuses on science and technology services, filing for a trademark is a must. Trademarks protect your intellectual property from competitors, and allow you to develop your own distinct brand in an already crowded market.
However, in order to apply for a trademark, you’ll need to know your business’s specific trademark class. A trademark class is a distinct grouping of products or services set out by the United States Patent and Trademark Office (USPTO). These classifications are even used internationally, so any business looking to expand overseas, even to sell a single item, should learn which classes they fall under.
In this article, we’ll talk about trademark class 42, which generally covers science and technology services. We’ll also go over some of the special issues that science and technology trademarks have.
Can I Apply for a Class 42 Trademark?
When you apply for a trademark, you claim exclusive rights to use that mark for your products or services. This can include any names, images, slogans, or other branding related to your business.
You also make a commitment to taking legal action against people who infringe on your trademark. If you fail to do so, you could lose both your trademark and any legal claim over the mark itself.
However, this scenario only applies to products and services that operate in the same class. Businesses in other classes can use similar branding as they wish, so long as they don’t try to sell in the same the same things as you. For this reason, choosing the correct trademark class is one of the most important parts of your trademark application.
While you can apply under multiple trademark classes, it’s more expensive to do so. In addition, you’ll need to provide evidence that your products or services fall into each of the categories you’re applying under.
For example, if your business sells custom-made computer programs, no other business that sells anything “confusingly similar” can use your registered names or marks. A company that creates leather goods, however, may use the name as they wish, since consumers are less likely to confuse your companies.
Changing Your Trademark Class
Many times, businesses move into new areas after applying for a trademark. It’s also easy to make mistakes when applying for trademarks, as it can sometimes be hard to determine which specific class your mark falls under.
Fortunately, you can always apply to use your trademark in new classes and industries as your business continues to grow.
Understanding Class 42 Trademark Services
As far as trademark classes go, class 42 is very broad. While we’ll list some of the more common uses below, this is hardly an exhaustive list.
Computer, IT, and Software Development Services
Services related to computers are almost always class 42 services. This includes all forms of software design, programming, digital security, and data handling services. This applies to services for both organizations and for individual consumers.
Note that computer repair services usually fall into both class 37 and class 42.
Scientific Research, Development, and Surveying Services
Class 42 also covers marks related to scientific and technological research. This includes all forms of scientific research and consulting, as well as almost all commercial research.
Note that medical study services and pharmaceuticals research companies usually fall into this category, not class 44. However, companies which provide both treatment and research should apply under both classes.
Miscellaneous Design Services
Many types of technology-related design services fall under class 42 as well, especially those that work with advanced tools. This includes web design in addition to designs for physical products, such as clothing.
Urban planning agencies, architecture firms, and most engineering businesses will also apply under this class.
What is Not a Class 42 Trademark Service?
Although class 42 is broad, there are a few things it doesn’t cover. While the following services relate to science and technology, they generally fall under other trademark classes.
- Some forms of market research are class 35 services. Keep in mind, however, that product development is generally a class 42 service.
- Likewise, word processing services are usually considered class 35 services. However, word processing services with a strong data processing or storage component should consider filing under both class 35 and class 42.
- Technology repair services, including computer repair, usually fall under trademark class 37.
- Resource processing or extraction services (such as mining or oil drilling) also fall under class 37.
- Medical or veterinary treatment services are always class 44 services.
Finally, keep in mind that trademark class 42 only applies to services. If your business produces goods, you need to file your mark into the related goods class. For example, if your tech business sells computers in addition to a class 42 service listed above, you’ll also file your mark under class 9.
There are a few other steps you should perform both before and after you formally register your mark with the USPTO.
Search for Similar Trademarks
Before you actually apply for your trademark, you’ll want to take a look at the USPTO’s trademark database. It’s free to use, and lists every currently active trademark.
By searching for trademarks similar to our own, you can prevent problems with infringement down the line.
It’s also common to use an attorney to conduct a more comprehensive search. In the event the attorney finds a confusingly similar trademark, he or she can help you how best to proceed.
Maintaining Your Trademark
Once you’ve applied for a class 42 trademark, you’ll need to maintain it. This means contesting cases of infringement.
It doesn’t necessarily mean going to court—cease and desist letters, for example, can fulfill the requirement. However, you do have to take steps to research possible cases of trademark infringement and respond to them.
You’ll also need to watch out for unfair trade practices. This means practices which take advantage of customer confusion relating to your brand. When it comes to services, the most common unfair trade practices are unauthorized uses of branding or slogans related to your service. As with other forms of trademark infringement, you’ll need to look into these incidents and respond to them through legal action. If you fail to do so, the USPTO might consider your mark abandoned.
Note that not all uses of your name or brand are necessarily unfair trade practices. U.S. law recognizes some practices, such as parody and nominal use, as fair use.
Fortunately, you also have no responsibility to report on these types of use and cannot lose your trademark for failing to respond to them.
If your company provides class 42 trademark services, you’ll probably need to contact a trademark lawyer. A good trademark attorney can help you understand the ins and outs of trademark law. They can also help you when it comes to maintaining your trademark. This in turn will allow you to develop a distinctive identity exclusive to your brand.