Picking the right category of goods or services for a trademark application appears deceptively simple. After all, if you're selling handbags and hats, you'd choose the categories of handbags and hats, right? Not so fast.
I always tell my trademark clients that when it comes to trademark applications, the devil is in the details. What appears to be a straightforward, simple application is actually rife with potential pitfalls. Choosing the proper category is a huge minefield, and here's why.
If you've done a proper trademark search, you should already be aware of potential conflicts with your proposed mark. If you find a conflict, but it's in a different category of goods or services than your product and wouldn't be likely to cause confusion to consumers, you might feel good about submitting the application. The sticky part is what exactly would cause confusion with consumers? A lot more things than you might think.
Let's say you own a yoga studio and want to register your name in the category of yoga studios. You might find an existing registration that has a name similar, but not exact, to yours. This registration is in the category of fitness apparel. Apparel and yoga studios are different, right? Nothing to worry about? Don't count on it! The trademark examiner will carefully consider how similar the names are and whether this apparel brand has anything to do with yoga. Let's say the apparel is strictly for boxing enthusiasts. Maybe no issue. What if the apparel is for pilates enthusiasts? Getting closer to having a problem. What we do for our clients is carefully analyze what category of goods or services we might be able to choose that wouldn't cause a problem with an existing registration. It's a time consuming process, based on analysis of the trademark statutes and using our judgment based on prior experience. It's not easy to find answers online, it really does take some skill and expertise.
Keep this in mind when choosing a category for your goods or services. When in doubt, engaging professional help may cost more up front, but will cost far less in the long run if you can avoid an Office Action or other problems with your application. If you want to schedule a quick call to talk about how we can help with your trademark registration, schedule a call here.
Sarah E. Holmes is a Philadelphia business attorney and strategist that helps start ups and established businesses looking to expand, protect their assets and increase their profits in an approachable, down-to-earth way.