Why is Trademark Search Necessary?

 

A Trademark is a unique identity of a product or business. It can be represented as a graphical representation, text, color combination, sound, smell, taste or even a name giving a full-fledged definition to a brand. Branding is a creative process and requires considerable research and brainstorming. Registration requirements vary depending on the class. To prevent inconsistencies, a Trademark Search must be conducted prior to filing a Trademark Registration Application. Large brands frequently register their names in each of the 45 classes that follow, but smaller brands only do so in industries they are already in or intend to enter. The present blog discusses choosing an appropriate trademark class for registration from the trademark classification. Therefore, we are mentioning here what are trademark search classes and how to choose trademark class for trademark registration and what all are the Benefits for Trademark Search and anything you want to know for Trademark Search in this blog.It prevents you from spending resources and money on a mark that may not be available.It provides you with time and flexibility to modify your mark before you launch your product/service

It helps you to avoid the costs business disruption associated with a forced rebranding.It helps you to avoid the costs of litigating a dispute.It provides you with insight on how to brainstorm for a mark mindful of potential registrability concerns.

 

What is the International Nice Classification (NCL)?

In 1957, The World Intellectual Property (WIPO)  set up the Nice Classification (NCL). This system groups goods and services together using a single classification scheme. Since the agreement covers trademarks registered in several different languages, the system facilitates searches for marks that may need translation. NCL separates business activity into 45 classes: 34 for products and 11 for services.There is a detailed taxonomy or tree-like listing of goods and services, compiled by the European Union Intellectual Property Office (EUIPO), within each class that further differentiates categories. These entries provide greater detail but are non-binding categories. Since the use of this classification scheme is widespread and complicated, seeking professional help to conduct a Trademark Search is well-worth considering.  USPTO and most countries worldwide have adopted the NCL protocol. The Classification Agreement lists over 10,000 goods and 1,000 services. A new edition is published every five years and a new version of each edition is published annually. Trademark offices of countries who have adopted this agreement must include the NCL codes in their official documents. You can find your class number using our Trademark Class search engine.

 

What is multiple-class trademark application?

The Nice Classification System categorizes products and services by class; you may file your trademark in one or more classes.There are countries that allow one class per application, whilst others allow multiple classes within the same application.The benefit of filing one application per class is that each class will have its independent process. If one class receives an objection or an opposition, the other applications/classes will not be affected. The disadvantage is that the price for various applications is higher.Furthermore, filing a multi-class application  is cheaper, but there is a risk that the entire application is affected if one of the classes receives an objection or opposition.In the first scenario, filing in more or less classes will not affect the registration probability each application. In the second scenario, if there are more classes, there is greater exposure and the chances of receiving objections or oppositions increase.The Trademarks Office provides a certificate per application not per class. Remember that not all countries allow a multi-class application.

 

How do I perform a Trademark Class Search?

Trademark classifications are necessary for the registration process but can be misleading. The 45 categories in the Nice Agreement describe in generic terms, highly nuanced areas of commerce. We recommend you begin with your core business and describe the item(s) that you produce in clear, precise terms. Once you conclude what the best category is, focus on fringe commercial activities. Add as many trademark categories as you need to help define the property rights you want to protect. Business plans typically span a variety of areas to allow flexibility in the marketplace. Choose classes that allow you to protect your long-term goals. The appropriate choice of a trademark class will not only increase the likelihood of acceptance, but also improve your ability to defend future infringement.You can also find your class number using our Trademark Class Search tool.When you apply for your trademark application, the classification choices depend on how you define your goods or services. Once you have a definition, find at least one classification class that covers your business definition. Consider other overlapping trademark classes that also describe your goods or services. You should also consider coordinated classes. Your choice of one or more classification categories will have a significant impact on the acceptance or rejection of your application.

 

Do I need to know my trademark class to file a trademark? Importance of Trademark Search:

You must include the appropriate trademark class designation when you complete the registration application, because almost all Trademark Offices around the world use industrial and commercial groupings to efficiently search for potential infringement issues. These regulatory bodies and administrators need a way to differentiate the numerous trademarks used around the world. Separating marks into classes that are divided into goods and services is a simple first step in reviewing an application for a new mark. When evaluating the strengths or weaknesses of the proposed trademark, a classification system facilitates the association of "like" with "like" and thus, helps match competitors more efficiently in similar or linked industries.

 

Another reason behind needing to know which trademark class(es) cover your mark is for your protection. When you use the most appropriate class(es) for classification, you will compare your trademark to marks already used by competitors in your chosen markets. How does the uniqueness and distinctiveness of your mark compare to other marks? Does the trademark offer you a competitive edge regarding your brand’s message?

 

Using a classification system simplifies public searches of your mark by competitors in your industry and makes it easier for competitor’s to avoid any infringement issues. The USPTO's Acceptable Identification of Goods and Services Manual is one of many sources to lookup trademarks online. You need to choose a trademark class when you apply for your mark to help a trademark office notify your target audience of your mark. A trademark class helps when both researching pre-existing marks as well as searching for potential property claim to avoid future infringement issues.

 

If you are unaware of which class or classes offer the best protection for your goods and services, familiarize yourself with the NCL listing. We alternatively recommend ordering a professionally prepared Trademark Comprehensive Study. By opting for this, our experienced attorneys will be able to review your product or service description and match it to the most appropriate class(es).  If they have any questions or need more clarification, they will contact you.

Trademark Search provides the useful information about the existing brand name or trademark.

It will make you aware of the other trademarks which phonetically similar to your trademark.

The Search process will provide the information of any Well-known trademark.

The most important reason to do a trademark Search is to avoid liability from trademark infringement lawsuits.

 

Trademark Search should also be done even if you have registered a trademark to know the potential infringer who may be using your trademark in their business to dupe your prospective customer.

 

What are coordinated classes?

Coordinated trademark classes cross over within the standard NCL class categories because they relate to one another. Most businesses diversify their activities to improve their market share. Your trademark application should reflect your activity in these associated industries to protect your brand name. Choose coordinated classes that not only refine your registration application, but allow for any potential future expansion of your commercial activities. These related classes can be used during a comprehensive Trademark Search to find conflicts before the submission of your application to the USPTO.

 

How do I determine the correct classes for my product(s)?

You must select the correct classification to increase your probabilities of a successful trademark registration. The Trademarks Office will not reimburse fees associated to your trademark application if your trademark is rejected. Careful revision by a trademark expert, that specializes in analyzing the strength of your trademark in its selected class(es) compared to your competitors is important as the number of objections and oppositions are increasing.You may also use our Trademark Search Tool to find the class number.

I know you must be thinking why you search trademark, well the answer is very simple; whenever you are going to register your trademark you should at least check whether your trademark, logo, etc is unique or it resembles existing mark of another person.

 

Conclusion

Trademark search is prior step to trademark registration because it is important to know whether the trademark name is unique or not because if your trademark is similar to the existing trademark.Therefore it is advisable to search similarity of your name with other registered names, otherwise, trademark application has to face so many hurdles before reaching to registered status.Therefore, trademark search is a continuous exercise instead of one-shot event.Therefore, LegalRaasta provides the trademark search facility absolutely free. This search functionality will not only suggest the uniqueness of your trademark but it will also guide you that under which class your mark will fall. This is like a tailored made approach to make trademark search no more tedious.