The U.S. Patent and Trademark Office (PTO), the federal agency that oversees the registration of federal trademarks, divides marks into 45 different "classes" of products or services. The purpose of these classes is to allow different types of businesses to register their trademarks into categories most related to their core business.

Class 42 includes scientific and technical services, particularly those provided by members of professions such as chemists, physicists, engineers, or computer programmers. In addition, it includes the services of engineers who undertake evaluations, estimates, research and reports in the scientific and technological fields, as well as scientific research services for medical purposes.

For a complete listing of all goods in Class 42, see below. For more information about trademarks and federal registration, see Nolo's articles on Trademark.

Examples of Trademarks in Class 42

Consider marks like AGRIAN (computer services for agriculture), PIXEL POOL (graphic illustration), JIFF (parenting skills software), all of which are good examples of Class 42 trademarks.

Class 42 is not as broad as you might expect, however. You would not use Class 42 if you were registering:

• business research and evaluations (Class 35 - Advertising and Business Services)
• word processing and computer file management services (Class 35 - Advertising and Business Services)
• financial and fiscal evaluations (Class 36 - Insurance and Finance Services)
• mining and oil extraction (Class 37 - Construction and Repair Services)
• computer (hardware) installation and repair services (Class 37 - Construction and Repair Services)
• services provided by the members of professions such as medical doctors, veterinary surgeons, psychoanalysts (Class 44 - Medical and Vet Services)
• medical treatment services (Class 44 - Medical and Vet Services)
• garden design (Class 44 - Medical and Vet Services), or
• legal services (Class 45 - Legal and Security Services).

Related or Coordinated Trademark Classes

If you are unsure whether to register in Class 42, you might also consider the following “coordinated” classes: Business Services, Class 36 - Insurance and Finance Services, Class 37 - Construction and Repair Services, Class 38 - Telecommunications Services, Class 39 - Shipping and Travel Services, Class 40 - Material Treatment Services, Class 41 - Education and Entertainment Services, Class 43 - Food Services, Class 44 - Medical and Vet Services, Class 45 - Legal and Security Services.

A coordinated class is one that is related to another class, usually because the PTO has determined that applicants filing within Class 42 often file in the other classes, too.

Trademark registration costs are also based on the class system. For each class of goods or services that you register, you must pay a separate registration fee. So if you apply for a trademark for posters (Class 16) and shirts (Class 25), you must pay two fees.

You must indicate the correct class at the time you are registering a trademark. If you list the incorrect class, you must start the application process over. Your registrations are restricted to those classes that encompass the goods or services you are already offering (as shown by the specimens you submit) or that you plan to offer (if you are registering on an intent-to-use basis). You may also need information about the class number in order to narrow a search of the PTO's trademark database.

Supplying Specimens for Class 42

A specimen for service must show use of the mark in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source. Where the mark is used in advertising the services, the specimen must show an association between the mark and the services for which registration is sought. A specimen that shows only the mark, with no reference to the services, does not show service mark usage.

When you are offering a service, you have no product to which you can affix a label. Acceptable specimens for services include a variety of materials that can’t be used for product marks. This includes scanned copies of advertising and marketing materials, such as newspaper and magazine ads, brochures, billboards, direct mail pieces, and menus (for restaurants).

Letterhead stationery and business cards showing the mark may be used if the services are plainly reflected on them, because the name or symbol being claimed as a mark would, in that context, be used to identify the services provided—that is, as a mark rather than as a trade name. A letter on stationery will even be accepted as a specimen for a service mark if the mark appears and the services are described in the letter.

In cases of services rendered over the Internet, a screen shot of the full Web page should be fine. If the mark is being prominently displayed on the home page, so much the better.

The following are unacceptable specimens for marks for Class 42 services:

• news releases or articles based on news releases
• documents showing trademark rather than service mark usage (use of the mark in connection with goods rather than services)
• invoices and similar documents such as packing slips
• letterhead or business cards that bear only the mark and a company name and address (use of the mark to identify a company, such as on letterhead; though one exception to this is if the letterhead or the text of the letter identifies the services represented by the mark.

Most marks appear in writing somewhere. If your mark represents a service, and it appears only on radio ads or in some other audio form, you may submit a sound file of the audio.

Complete Listing of All Goods in Class 42 Based on Taxonomy

• IT services, computer system analysis, computer system design, monitoring of computer systems by remote access.
• Software development, programming and implementation, computer programming, computer software design, updating of computer software, computer software consultancy, creating and maintaining web sites for others, installation of computer software, maintenance of computer software.
• Computer hardware development, consultancy in the design and development of computer hardware.
• Hosting services and software as a service and rental of software, hosting computer sites [web sites], providing search engines for the internet, rental of computer software, rental of web servers, server hosting, software as a service [SaaS].
• Rental of computer hardware and facilities, computer rental.
• IT consultancy, advisory and information services, information technology [IT] consulting services.
• IT security, protection and restoration, computer virus protection services, recovery of computer data.
• Data duplication and conversion services, data coding services, conversion of data or documents from physical to electronic media, data conversion of computer programs and data [not physical conversion], digitization of documents [scanning], duplication of computer programs.
• Science and technology services, calibration [measuring], construction drafting, consultancy in the field of energy-saving, cosmetic research, energy auditing, quality evaluation of wool, quality evaluation of standing timber/quality valuation of standing timber, handwriting analysis [graphology], scientific laboratory services, mechanical research, technical project studies, research and development of new products for others, scientific research, technical research, water analysis.
• Medical and pharmacological research services, clinical trials.
• Engineering services, engineering.
• Surveying and exploration, analysis for oil-field exploitation, geological research, geological prospecting, geological surveys, land surveying/land surveys, oil prospecting, oil-field surveys, oil-well testing, surveying, underwater exploration.
• Architectural and urban planning services, architectural consultation, architecture, urban planning.
• Natural science services, bacteriological research, biological research, chemical research, chemical analysis, chemistry services, physics [research].
• Earth science services, cloud seeding, provision of scientific information, advice and consultancy in relation to carbon offsetting, research in the field of environmental protection, weather forecasting/meteorological information.
• Testing, authentication and quality control, authenticating works of art, material testing, quality control, textile testing, vehicle roadworthiness testing.
• Design services, design of interior decor, dress designing, graphic arts design, industrial design, packaging design/packaging design services, styling [industrial design], web site design consultancy.

Share on Google Plus

Share on Facebook