If you own a science or technology business, trademarks are a must. By protecting your intellectual property, trademarks allow you to develop a distinct brand. However, to apply for a trademark, you’ll need to know your product’s or service’s trademark class. A trademark class is one of 45 distinct groups of products and services set out by the United States Patent and Trademark Office (USPTO).
In this article, we’ll talk about class 42 trademarks. Trademarks relating to science and technology services fall into class. 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 your trademark.
However, this only applies to products or services in the same trademark class. Businesses in other classes can use similar branding at their leisure. Thus, 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.
It’s important to understand the difference between trademarks and patents. Trademarks solely protect branding, such as logos and names. They do not protect the designs of individual products or technologies. For that, you’ll need a patent. Meanwhile, copyrights protect cohesive intellectual works, such as screenplays.
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 which trademark class you should register in isn’t always clear.
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. It includes services such as:
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 services may also relate to 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.
Miscellaneous Design Services
Many types of design are class 42 trademark services, especially those that work with advanced tools. This includes web design as well as design for physical products, such as clothing. It also includes urban planning, architectural design, and other engineering services.
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 fall into 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 into trademark class 37.
- Resource processing or extraction services (such as mining or oil drilling) fall into 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 will need to file for your trademark in the right class for those goods.
Finding 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, 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 trademark infringement, you’ll need to look into these incidents and respond to them through legal action. If you fail to do so, you could be abandoning your trademark.
Note that not all uses of your name or brand are necessarily unfair trade practices. US 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.