Last updated on June 13th, 2019
When you apply for a trademark in the United States, you must select one or more trademark classes. These are 45 classifications of goods and services into which all intellectual properties (IPs) fall. Trademarks only protect intellectual properties from infringement within the same class.
For this reason, understanding the differences between the different trademark classes is an important first step in protecting your brand.
In this article, we’ll go over Trademark Class 36, which includes trademarks connected to a wide variety of insurance and financial services. We’ll also talk about the importance of maintaining your trademark once you’ve received it.
How can a Class 36 Trademark Protect my Intellectual Property?
Every business has some aspect that helps them stand out from the crowd. A trademark can be used to protect your brand from infringement.
Intellectual property in this sense refers to names, slogans, logos, and other forms of branding. It doesn’t generally encompass artistic works or product designs. For those, you’ll need to rely on copyrights or patents, respectively.
Unless you hold trademarks for your products and services, it may be difficult to develop a brand unique to your business. However, it’s important to remember that your trademarks will only protect you from infringing properties within the same class.
This is why there can be both a Delta Airlines and a Delta Faucet Company without either property infringing upon the other.
You can also apply under multiple trademark classes. However, you will need to demonstrate that your products or services fall into each of the classes that you are applying under. In addition, you will also have to pay a separate application fee for each class.
What are Class 36 Trademark Services?
Trademark Class 36 is very broad and encompasses a wide variety of insurance and financial services.
It would be impossible to create a truly exhaustive list, but we can provide a few common examples of services which fall into this class, which we’ll list below.
Almost any conceivable insurance or actuarial service will fall under the Class 36 umbrella. Similarly, most forms of underwriting, brokerage, and warranty services are included in Class 36.
Real Estate Services
This category includes services like housing management, leasing, rental, and rent collection.
Standard Banking Services
Most standard financial services fall under Class 36.
Examples include checking, loan, credit, safe deposit, and financial appraisal services. Services related to these, such as debt recovery or debt collection, fit here as well.
Investment services, retirement plans, and the like are all Class 36 services.
In addition, Class 36 includes many financial businesses that are difficult to classify, such as pawnbrokers and currency exchange services.
Filing Under Multiple Classes
In some cases, you’ll have a product or service that doesn’t fall under a single trademark class.
In cases such as these, you can always list more than one trademark class on your application. However, you will need to pay additional fees for every class that you list.
This is particularly relevant when it comes to businesses designed to provide financial services for a specific sector.
For example, a company might exist to provide loans and other services specifically for construction companies. In that case, the business owner will want to apply under both Class 36 and Class 37.
Will the USPTO Reject my Trademark Application?
There are a number of reasons that the United States Patent and Trademark Offices might reject your Class 36 trademark application.
Here are two of the most common:
Your Mark Infringes on Existing Trademarks
The USPTO will reject any application that too-closely resembles an existing trademark within the same class.
For that reason, you should always search the USPTO trademark database before you file a new trademark application. However, keep in mind that the USPTO does not advise businesses or individuals on the availability of trademarks before they file.
If your trademark does resemble one in the database, you’ll have two options. You can either file under a different trademark class, or you can change your trademark.
In either case, you’ll want the advice of an experienced trademark lawyer to work out the specifics of your application.
Your Business’s Mark Actually Relates to a Good
Trademark class 36 is a service class. If you provide a product in addition to a service, you will probably have to apply under both class 36 and the appropriate goods class.
For example, a real estate business that wanted to sell branded clothing would need to file under both Class 36 and Class 25.
Maintaining your Trademark
Once you’ve received your trademark, you’ll need to maintain it. This means taking legal action to combat infringement whenever possible. Of course, this doesn’t necessarily mean initiating court proceedings.
Instead, sending cease and desist requests to the infringing parties may be sufficient to defend your intellectual property in most cases.
If you fail to defend your trademark, the court may find that you have abandoned your trademark.
Infringement and Fair Use
“Fair Use” refers to uses of your trademark which aren’t likely to create customer confusion. These uses include nominal use (saying the name of your product), comparative use (comparing your product to another), and parody.
Because these uses are fair, they are never considered to be trademark infringement. As a result, you do not have an obligation to document or challenge fair uses of your trademark.
The most important part of applying for a class 36 trademark is preparation. In addition to searching the USPTO database, you’ll want to make sure that you can afford to defend your trademark before you apply.
Fortunately, this process becomes much easier with the help of an experienced trademark lawyer. By hiring the right legal counsel, you can both simplify the trademark process and avoid potential issues with your trademark in the future.