When applying for trademark registration with a specific office, we must provide a list of goods or services for which our mark will be registered. This is necessary because it is not possible to register a trademark "generally," without specifying specific goods or services.
Goods and services are grouped into specific classes of the International Classification of Goods and Services for the Registration of Marks (Nice Classification). The classification is used by the parties to the Nice Agreement of June 15, 1957, to determine the scope of protection afforded to individual trademarks. This classification allows for a given mark to be registered, for example, by one entity for goods in Class 10 (Surgical Apparatus and Instruments) and by another entity for goods in Class 15 (Musical Instruments). A mark can be registered using more general terms assigned to a given class, such as "Software," as well as specific terms, such as "Internet Application and Server Software.".
It's worth emphasizing that both more and less general terms have their advantages and disadvantages. Registering a general term allows for protection across a range of subcategories. Therefore, if a given entity does not currently provide a certain type of service or sell certain goods but plans to include them in its offerings in the future, registering a general term will avoid the need to re-register. On the other hand, registering general terms increases the risk of infringing the rights of third parties and their filing objections to our registration. If we register our trademark solely for "Software for Internet Applications and Servers," we will avoid a conflict with the owner of a similar trademark registered for "Computer Game Software." However, when deciding to register a trademark in the "Software" category, we must consider the possibility of a conflict with an identical or misleading trademark of the entity that registered the "Computer Game Software" trademark, given that the latter term is a subcategory of "Software.".
It's also important to remember that a trademark owner is obligated to "actually use the mark" after five years of registration. Therefore, if the mark is registered for goods we don't sell or services we don't provide, this may have certain consequences for us. In particular, if we file an opposition to the registration of an identical or similar mark by a given entity, they will often be required to provide "proof of use." If we haven't used the mark to designate the goods or services in question, we may not be able to block another entity's registration for those goods or services.
To sum up, every time we register a trademark we must prepare an optimal list of goods and services, taking into account in particular the issues presented above.
This article is for informational purposes only and does not constitute legal advice.
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