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# Navigating Trademark Objections and Oppositions


## What are trademark objections and oppositions?
When a trademark is filed, the registration office will examine the application to make sure that the trademark complies with all the registration requirements.

If one or more requirements are not met, the trademark will be refused. This initial refusal can bear different names depending on the jurisdiction. The most common names are objection, office action, examiner’s report or initial refusal of a trademark.

The refusal grounds may be based on formal matters, such as an unclear description of goods and/or services, which can be easily overcome. However, trademarks may also be initially refused if the examiner finds previously filed or registered trademarks to be identical or confusingly similar, or if the trademark does not comply with the distinctiveness requirements (the trademark is found to be generic, descriptive, indicative, etc.).

## What can I do if my trademark application has received an objection, office action, examiners report or initial refusal?
Once a refusal has been received, depending on the grounds for refusal, the applicant may be able to overturn the examiner’s initial findings by submitting arguments of why the trademark should be accepted, or amend and/or clarify any points of the application that have caused the examiner’s initial findings.

The time frames to respond vary between jurisdictions and if no response in presented, the trademark will be declared abandoned, lapsed or definitively refused.

## How can I prevent future conflicts with a similar trademark?
If you believe that a similar trademark may conflict with yours and that its existence may constitute an obstacle to the registration of your trademark, a coexistence agreement may be negotiated between both parties. 

A coexistence agreement can be beneficial for the following reasons:

- It can prevent an examiner’s initial refusal based on the existence of the trademark with whose owner a coexistence agreement has been reached.

- It can prevent the success of opposition actions between the parties as long as both comply with the negotiated agreement.

- It can prevent possible law suits from being presented based on trademark infringement. 

Bear in mind that not all coexistence agreements will be valid or taken into account by trademark offices or authorities. If the examiner believes that the existence of both trademarks will confuse consumers, or be contrary to public interest, the coexistence agreements may be ignored by trademark offices. Coexistence agreements may not be used to control certain sectors of markets, promote actions of unfair competition or create monopolies.

## What is a coexistence agreement?
A coexistence agreement is a contract between two trademarks holders in which they formally state that neither of the trademarks affect each other’s interests when used or registered in certain territories and for certain goods and/or services, as long as certain standards of behavior or commitments are met. Such contracts also declare that neither party will oppose the registration or use of the counterpart’s trademarks as long as the undertaken commitments are held. 

At the very least a coexistence agreement should include:

- Clear identification of both parties.

- Clear identification of the trademarks that both owners wish to allow to coexist.

- Clear identification of classes, products and services each trademark is limited to and is to be registered and used in commerce for.

- Clear identification of the countries or territories in which the coexistence agreement is to have effect between both parties.

## What is a third-party opposition to a trademark?
A trademark opposition is an action brought on by any third party who wishes to prevent a filed trademark from being registered, if they feel that the trademark may harm their business or legitimate interest. The great majority of jurisdictions have a determined time-frame or window of opportunity called the publication period during a trademark’s registration process when oppositions can be filed. 

Some of the factors that may compel a third party to oppose a trademark are:

- The third party is the owner of identical or similar trademarks.

- The third party believes the published trademark may be confused in the marketplace with theirs.

- The third party thinks the trademark is being registered in bad faith.

- The third party believes the trademark does not comply with the necessary requirements to be granted protection.

The period of time for oppositions to be presented varies in each jurisdiction. 

## What can I do if my trademark application has received an opposition from a third party?
Whether or not an opposition can be overcome will depend on the merits of each case. In most cases, opposition proceedings end up being more expensive than the price of an application. Knowing this, the opposing party often files oppositions in order to deter holders from defending their trademarks. In some jurisdictions, not defending a trademark from an opposition will automatically cause it to be refused. Nevertheless, if a trademark is a pivotal element of a business, defending a filed trademark from an opposition may be worth the time and money.

Although the arguments used to defend one's trademark application will depend on each individual circumstance, they are usually related to the reasons why the filed trademark does not cause confusion in the marketplace with the opposing party's trademark, or why the applicant has legitimate rights over the trademark (e.g. the trademark has been effectively used for a considerable period of time and has gained recognition in the marketplace).

## Can a registered trademark be canceled, invalidated, annulled, or revoked?
Yes. Legal proceedings and actions aiming at cancelling a trademark’s registration are possible in the vast majority of jurisdictions. The grounds on which such actions may be based vary from jurisdiction to jurisdiction. However, whatever the basis for cancellation, the existence of the trademark must in some way affect the legitimate rights of the party who is presenting the cancellation action.

Some grounds for which a cancellation action may be evoked are:

- If a registered trademark may cause confusion with another previously registered trademark;

- If the trademark is or has [become generic since its registration](/registered-trademarks-daily-language). This is the case with trademarks that no longer serve to differentiate a trader’s or provider’s goods or services from others, and are now the widely used expression in the market place to refer to a determined product or service, regardless of its source;

- If the trademark was registered in bad faith;

- If the registered trademark is a well-known or famous trademark, and the registrant is not the real owner or does not have the real owner’s authorization.

- If the trademark has not been used in a real and effective way for a determined number or years. 

What grounds are acceptable, if any, will depend on the jurisdiction of interest.

What are objections, oppositions, cancellation or invalidity actions for trademarks and what to do if you receive one.

A guide to trademark objections and oppositions

# What is the Madrid System?

The Madrid System for multinational trademark applications aims at facilitating the process of trademark registration in a [large number of countries](http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf "Madrid system members"). It is governed by the Madrid Protocol, a treaty signed by multiple members, and allows a trademark holder to request the extension of a single trademark application or registration made in one member country to any number of other member countries.

If you need personalized assistance please visit our page about the [Madrid System](/madrid-system-trademark-registration "Madrid System") or [contact us](/#contact-us-form "Contact Us").


## How does the Madrid System work?
  
### Requirements

In order to use the system, a potential applicant must comply with one of the following requirements:

*   Be a national of a Madrid Union member country; or
*   Be a resident of a Madrid Union member country; or
*   Have a real and effective industrial or commercial establishment in Madrid Union member country.

This will determine the applicant’s country of origin. 


### Application process

The first stage of the process is to file a trademark application or have a trademark registered in the country of origin. This is done through the local trademarks office in compliance with the country’s requirements. Once the local trademark is filed or registered, an application is made to the World Intellectual Property Organization (WIPO) via the local trademarks office to extend the trademark to the designated member countries.

The trademarks office of each designated country will then proceed to examine and accept or refuse the application depending on their local regulations.

## Should I use the Madrid System?

### Geographical coverage

A great number of countries and organizations are current signatories of the Madrid Protocol, including the European Union Intellectual Property Office (EUIPO) and African Intellectual Property Organization (OAPI), and more are very likely to enter the system in the short to mid-term. The WIPO states that these jurisdictions cover more than 80% of the world trade. Nevertheless, it is worth mentioning that some important markets are not members of the system, among others Hong Kong and the majority of South America. 

### Saving Time and Money

One of the main benefits of the Madrid system is convenience, as a single application is filed, in one language, with no need for translations, Power of Attorney documents or other documentation. This also means significant reductions in costs, as the applicant will not need to pay the legal fees of local attorneys or agents in order to file the application. It is also worth mentioning that the system permits “subsequent designation”, which means that it is possible to extend the application to new member countries gradually once the initial WIPO application is filed, as the applicant’s business expands and their budget increases.

The system also facilitates the subsequent managing of the trademark portfolio, such as renewals or change of owner’s details, since they can be done in bulk via WIPO instead of individually in each country. Finally, applying via the Madrid system ensures that applications will be processed in a timeframe of 18 months, which can be a significant advantage in some countries where the length of the process for locally-filed applications can be much longer.

## Main drawbacks of the Madrid System

Frequently these drawbacks mean that using the System is not that beneficial. If you want to file in individual countries we suggest that you visit our [International Trademark Registration](/international-trademark-registration "International Trademark Registration") page and contact us if you have any questions.

### Lack of flexibility

One of the system’s main benefits – the filing of one single application – can also be one of its drawbacks, as it means that the applications in all countries will be exactly identical. Though this is not always an issue, in some cases applicants would appreciate being able to tailor the description of goods or services to a specific local market. Furthermore, a description that is acceptable to WIPO might be unacceptable in some local offices, leading to objections or initial refusals to the application.

### Responses to local refusal

If the application should receive a refusal or an objection in one of the designated countries, then any defense or response will have to be presented via a local attorney or agent in that same country, which means the applicant will have to find one such local representative, incur additional costs for the take-over, eventual translations and the preparation and filing of the defense, and, depending on the country, might also have to execute a Power of Attorney to appoint the local representative. 

### Dependence on the Country of Origin Trademark

During a period of five years following its registration, the international trademark in all designated countries is subjected to the validity of the trademark that is registered or filed in the country of origin. If this mark were to be definitively refused, cancelled or revoked, then the international trademark, that is to say, all the local applications based on the initial WIPO application, would also be lost – and along with it the substantial investment that this trademark represented. 

### Local requirements

Some countries that are members of the Madrid system have some specific requirements, such as for instance the filing of a Declaration of Use or Specimen of Use. Applications made via the Madrid system are still subjected to those requirements, which some applicants neglect to fulfill, leading to the lapse of the registration in some jurisdictions.

## Our services

### Madrid / WIPO trademark applications

We can help you file a WIPO application and extend it to any of the Madrid members from the following countries of origin: Australia, Austria, Benelux, China, European Union, France, Germany, India, Italy, Japan, Russia, Spain, Switzerland, Turkey, the United Kingdom and the United States.

If you wish to extend your application from any other country of origin please write to us and we will let you know if we can assist you.

### Responses to Provisional Refusals

If you have received a provisional refusal to your WIPO application in one of the designated countries, we will be able to assist you thanks to our extended network of trustworthy and experienced local attorneys. Just send us the details of the refusal and we will get back to you.

The Trademark Madrid System for multinational trademark applications aims at facilitating the process of trademark registration in a large number of countries.

An Overview of the Madrid System for International Trademarks

# ChatGPT - Genius technology, terrible trademark choice

## What is ChatGPT?

ChatGPT is a conversational AI model developed by OpenAI, leveraging advanced machine learning techniques to generate human-like responses in dialogue form. It is part of the broader family of Generative Pre-trained Transformers (GPT) that have revolutionized natural language processing (NLP) by providing sophisticated language understanding and generation capabilities. ChatGPT is designed to interact with users in a conversational manner, answering questions, providing information, and engaging in dialogue on a wide range of topics.

### What does GPT Stand For?

GPT stands for Generative Pre-trained Transformer. This term encapsulates the core functionalities and design philosophy behind the model:

- Generative: This refers to the model's ability to generate text. GPT models can create coherent and contextually appropriate sentences, paragraphs, and even entire articles based on the input they receive. This generative capability is fundamental to their use in applications like chatbots, content creation, and more.

- Pre-trained: Before being fine-tuned for specific tasks, GPT models undergo a pre-training phase where they are exposed to vast amounts of text data. During this phase, the model learns the statistical properties of language, including grammar, semantics, and factual knowledge about the world. This pre-training is crucial because it provides the foundational knowledge that the model later uses to generate text.

- Transformer: The transformer architecture, introduced by Vaswani et al. in 2017, is the backbone of GPT models. Unlike previous models like Recurrent Neural Networks (RNNs) and Long Short-Term Memory networks (LSTMs), transformers use a mechanism called self-attention to process input data. This allows transformers to handle long-range dependencies and understand context more effectively, making them particularly well-suited for NLP tasks.

### What does Chat Stand For?

In the context of ChatGPT, "chat" refers to the interactive and conversational nature of the AI system. Here's a detailed breakdown:

- Chat: The term "chat" in ChatGPT signifies the model's primary function of engaging in dialogue with users. Unlike traditional information retrieval systems, which simply fetch relevant documents or data based on queries, chat systems are designed to mimic human conversation. They provide responses that are contextually relevant and coherent, enabling a more natural and intuitive interaction between the user and the AI.

Chat in light of ChatGPT entails Conversational AI. This broader category encompasses technologies that facilitate natural language interactions between humans and machines. ChatGPT is a prime example of conversational AI, capable of understanding user input, maintaining context, and generating appropriate responses in real-time.

## Understanding Trademarks and Their Requirements in light of ChatGPT

### What are Trademarks?

A trademark is a recognizable sign, design, or expression which identifies products or services of a particular source from those of others. Trademarks can be symbols, words, phrases, logos, or a combination thereof. They serve several critical purposes:

- Brand Identification: Trademarks help consumers distinguish between different products and services in the market, associating specific qualities and characteristics with a particular brand.
  
- Legal Protection: Registering a trademark gives the owner exclusive rights to use the mark in connection with the products or services for which it is registered. This protection helps prevent unauthorized use of the mark by competitors.
  
- Business Asset: Trademarks can become valuable business assets, contributing to brand reputation and loyalty. Strong trademarks can significantly enhance a company's market position and value.

#### General Requirements for Trademarks to be Registrable

To be registered, a trademark must meet several key criteria:

1. Distinctiveness:
 The trademark must be capable of distinguishing the goods or services of one entity from those of others. It should not be generic or merely descriptive of the product or service.

2. Non-Confusing:
The trademark must not be too similar to existing registered trademarks. It should not cause confusion among consumers about the source of the goods or services.

3. Non-Descriptive:
Trademarks that are merely descriptive of the goods or services they represent are generally not registrable. For example, a company selling apples cannot trademark the term "Apple" for their apple products.

4. Non-Deceptive:
The trademark should not be misleading or deceptive about the nature, quality, or geographical origin of the goods or services.

## The Generic Nature of ChatGPT as a Trademark
### Why ChatGPT is Generic

- Descriptive Nature: The name ChatGPT directly describes the functionality of the system—chatting (interacting conversationally) using a GPT (Generative Pre-trained Transformer) model. Descriptive names are considered generic because they simply describe the product or service without indicating a unique source or origin.

- Industry Standards: In the tech industry, particularly in AI and NLP, terms like "chat" and "GPT" are widely used. "Chat" is a common descriptor for conversational interfaces, and "GPT" refers specifically to a type of transformer model developed by OpenAI. The combination of these terms does not create a unique identifier but rather describes a category of AI models used for conversational purposes.

- Common Usage: Both "chat" and "GPT" are used extensively by various entities within the industry. Numerous AI and tech companies employ GPT models for creating chatbots and other conversational agents. Allowing a trademark on the term ChatGPT could lead to unfair advantages and restrict the descriptive use of these terms by others in the industry.

### Why ChatGPT Should Not Be Allowed Registration

- Lack of Distinctiveness: For a trademark to be registered, it must be distinctive. This means it should be able to identify the goods or services of one entity and distinguish them from those of others. ChatGPT, being a combination of common industry terms, lacks the distinctiveness required for trademark protection.

- Consumer Confusion: If ChatGPT were allowed registration, it could potentially lead to consumer confusion. Users might mistakenly believe that all products or services using GPT for chat functionalities are associated with OpenAI, even when they are not. This can mislead consumers and create an unfair market advantage.

- Restricting Industry Use: Granting trademark protection to ChatGPT would restrict other companies from using descriptive terms that accurately describe their own products. This would stifle innovation and competition in the AI and tech industry, as other entities might be deterred from developing or marketing their own GPT-based conversational agents due to potential legal challenges.

#### Existing Systems and Software with Chat Bots and GPT Technology

The landscape of AI and conversational agents is vast, with numerous systems and software leveraging chatbots and GPT technology. Here are a few notable examples of other similar trademarks that are basically ChatGPT products:

1. Microsoft Azure Bot Service
2. Google Dialogflow
3. IBM Watson Assistant
4. Amazon Lex
5. Facebook Wit.ai

## Recommendation for OpenAI: Rebrand ChatGPT

To fully capitalize on the potential of their conversational AI technology and secure trademark protection, OpenAI should consider rebranding ChatGPT. A new brand name should meet the following criterias:

Distinctiveness: The name should be unique and not merely descriptive of the product’s functionality. It should be creative and memorable, standing out from other AI and chatbot technologies in the market.

Brand Identity: The new name should reflect the core values and capabilities of the technology, aligning with OpenAI's mission and vision. It should evoke the sophistication, intelligence, and innovation that ChatGPT represents.

Trademark Eligibility: The name should be eligible for trademark registration, ensuring that OpenAI can protect its intellectual property and build a strong, legally defensible brand. This involves avoiding generic or overly descriptive terms and conducting thorough trademark searches to avoid conflicts with existing brands.

Market Positioning: A well-chosen brand name can help position the product more effectively in the market, attracting users and differentiating it from competitors. It should convey the advanced technological capabilities and user benefits of the conversational AI.

### Steps for Rebranding:

Brainstorming and Creativity: Engage a diverse team to brainstorm potential names, considering linguistic, cultural, and industry factors. Aim for names that are evocative, meaningful, and easy to pronounce.
  
Trademark Search and Legal Checks: Conduct comprehensive trademark searches and legal evaluations to ensure the chosen name is available and does not infringe on existing trademarks.

Market Testing: Test the shortlisted names with target audiences to gauge their reactions and preferences. This can help ensure the new name resonates well and conveys the desired message.

Launch Strategy: Plan a strategic launch for the new brand name, including updating all marketing materials, websites, and documentation. Communicate the rebranding clearly to existing users and the broader market.
## Conclusion

By rebranding ChatGPT to a more distinctive and trademark-eligible name, OpenAI can strengthen its market presence, protect its intellectual property, and continue to lead the field of conversational AI with a strong, recognizable brand.

At the moment this article was written Opan AI is in process of registering ChatGPT in the USA through the USPTO. The trademark has been initially refused by the trademark authority. Opan AI may choose to file a request for reconsideration; and/or present an appeal to the Trademark Trial and Appeal Board.

ChatGPT is an incredible new tool. However, from a trademark point of view it is a terrible mistake as its name consists of the name of the technology other products use and does not constitute an actual trademark name or brand.

ChatGPT was a terrible trademark choice

# Selecting the Right Filing Basis for US Trademarks

In order for a trademark to register in the USA it must either be in use inside the territory of the United States, or registered abroad. For this reason, whenever one files an application with the USPTO, a “filing basis” must be specified, indicating on which basis the applicant registers the trademark in the USA.

If an applicant does not yet use the trademark in the USA and does not have a registration abroad, they can still apply for registration, but their application will not register until they are able to demonstrate that they are effectively using the trademark in the USA. In such cases, the applications are based on _intent to use_. 

There are four main filing bases to registered trademarks in USA
----------------------------------------------------------------

### 1\. Application Based on Use in Commerce:

_Use in commerce_ should be chosen when the trademark being applied for has effectively been used in commerce (inside the US) for the goods and/or services for which it is being applied.

Applying under this basis requires that the following be provided at the moment of filing:

*   A **Declaration of Use** (DOU) declaring that effective use of the trademark has been made on or before the date of filing and stating the date on which the trademark was first used in the United States.
*   A **Specimen of Use** (SOU) showing how the trademark is being used in connection with the goods and/or services for which it has been filed. One specimen per class is sufficient.  

2\. Application Based on Intent to Use:
---------------------------------------

_Intent to Use_ should be chosen when the trademark being applied for has not yet been used for the goods and/or services for which it is being applied. 

Under _Intent to use_, no Specimen of Use needs to be filed at the moment of application. However, before registration is effectively granted, the trademark will necessarily have to be in use in commerce in the USA. 

A **Declaration of Use** and a **Specimen of Use** will have to be filed during the period of six (6) months after official notice has been given that the trademark has been accepted for registration (Notice of Allowance). If the trademark is not used during the 6-month period, then an extension of time may be requested. _This will incur additional costs._

### 3\. Application Based on a Foreign Application:

_Based on a Foreign Application_ can be used when an identical trademark has been filed in the applicant's country of origin in the last 6 months by the same owner and for the same goods and/or services. The foreign application must be the very first application of the trademark anywhere.

This basis gives the owner **priority** over any conflicting trademarks that are filed in the United States after the foreign application was filed in the foreign country. Once registered, a translated (if necessary) copy of the trademark certificate will have to be submitted to make the registration in the USA effective. _This will incur additional costs._

If the foreign application were to be rejected by the local office through which it is being processed, the applicant would then have to transform the application in the United States to be based either on _Use in Commerce_ or _Intent to Use_, losing the priority date given by the foreign application.

### 4\. Application Based on a Foreign Registration:

_Based on a Foreign Registration_ can be used when an identical trademark has been effectively registered in the applicant's country of origin by the same owner and for the same goods and/or services. A translated (if necessary) copy of the trademark certificate will have to be provided.

The real benefit of this basis is that the trademark does not have to be in use in order for it to be granted or effectively registered. However, the trademark will have to be used in the USA after registration is granted.

Having a registered trademark in the country of origin DOES NOT ensure successful registration of the trademark in the United States. The application may receive office actions or third-party oppositions.

If a trademark qualifies for more than one filing basis, the selection must be done carefully, preferably after consulting with a trademark specialist.

\---

See iGERENT's prices for [trademark registration in USA](/trademark-registration-united-states "Trademark Registration Services in the USA").

iGERENT offers trademark services in more than 180 countries. For further information [contact us](#contact-us-form "Contact us").

What are the filing bases and how to choose a filing basis for your trademark application in the USA to get a registered trademark in the USA.

Choosing the filing basis for a US trademark

# How to Describe Goods and Services for Your Trademark

One of the common misconceptions of people who are not “in the know” about trademarks, is believing they will be able to prevent anyone else from using their trademark simply by registering it. While this has some degree of truth, the statement needs some clarification.

*   First of all, trademarks have territorial validity – they can only be protected in the jurisdiction where they are registered. We recommend that you check our article on [Registered Trademarks and Their Territorial Limitations](/registered-trademarks-and-their-territorial-limitations "Registered Trademarks and their Territorial Limitations") if you need more information on the subject.
*   Secondly, in some jurisdictions, the real ownership of a trademark is determined by who is the first to use it, not the first to file it for registration. It is still highly advisable to register a trademark in those jurisdictions, in order to prevent future conflicts.
*   Finally, and this is our topic today, registering a trademark only affords protection for the goods or services included in the description that is filed with the local trademarks office.

Describing your goods or services
---------------------------------

A fundamental feature of a trademark application is the description of the products and/or services that the trademark is to be used in connection with. Coming up with a description that is both accurate and in compliance with the requirements of the local trademarks office is one of the most critical and sometimes delicate steps in the process. A trademark filed with an incorrect description, even if it registers, may very well be absolutely useless to its owner or leave the door open for a third party to appropriate the mark for other products or services that may be of interest to the original applicant. 

There are many factors to consider, but before anything else, it is vital that you know what you sell – and what you intend to sell. Many times, in lieu of a description of products or services, trademark agents will receive a link to their client's website and an injunction to “have a look and come up with a description”. While this might work for Ben & Jerry’s – a single glance at their website makes it quite obvious that they sell ice-cream – imagine a trademark agent getting into IBM’s website and trying to make an exhaustive list of their products. Not only would this be extremely time consuming, but chances are the agent would miss some of the goods and therefore not include them in the trademark application. Additionally, products that you intend to commercialize in the near future should also be included, and your trademark agent probably can't determine your future plans from your website. In short, you are the one who knows your business best, and so should be the one to provide the preliminary description.

The Nice classification
-----------------------

In order to facilitate the work of both trademark agents and examiners, the majority of countries have adhered to the Nice agreement of 1957, thereby implementing what is now a staple of trademark registration worldwide: the Nice classification.

This classification groups similar products and services into different categories called classes. There are 34 for products and 11 for services. Each class heading will give a general idea of what type of goods or services is included within that same class, for instance:

> Class 3 - Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Within each class, the Nice classification provides a non-exhaustive, alphabetical list of items that belong to it. However, the classes are not limited to the products or services listed there. If a product or services is not mentioned in the list, it must be categorized into the corresponding class according to its nature or type.

When filing a trademark application in countries that use the Nice classification, the trademark owner will not only have to provide a description of their products or services, but also determine which class or classes they belong to, and therefore, in which class or classes they want their application to be filed.

### TOP 3 CLASSES IN TRADEMARK FILINGS:

*     Class 35 - advertising, business management, business administration and office functions.
*     Class 9 - scientific, photographic, measuring instruments, recording equipment, computers and software.
*     Class 25 - clothing, footwear, headgear.

It is interesting to note that, as previously mentioned, the Nice classification was created in 1957, and even though it is continually revised and updated – the one currently in use is the 10th edition - it did not exactly predict the exponential growth of the tertiary sector or the technology explosion. This explains the unbalance in the repartition of classes in today’s trademark filing worldwide: in 2014, class 35, which includes business management and administration, was included in almost 10% of applications, while class 9, to which all electronic devices belong, appeared in 6.8% of all filings. (Source: [WIPO statistics](http://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2015.pdf "Wipo statistics"))

How to choose under what class(es) you should register your trademark
---------------------------------------------------------------------

Armed with the accurate and precise list of your products or services you came up with previously, you can then determine the class or classes your application will be filed in. 

Returning to our Ben & Jerry’s example, for example, if you type “ice cream” in the search box and press enter, you will come up with this:

![class_30_ice_cream_search_results.png](https://res.cloudinary.com/dudyf0uni/image/upload/v1721996697/class_30_ice_cream_search_results_97b1d615fc.png)

In this case, it is pretty straightforward. However, maybe your list includes a lot of different products, or the items you included simply do not return any results in the search tool – maybe you used a slightly different vocabulary from the one the Nice classification uses. This is where the assistance of an expert trademark agent will be invaluable, as they have the experience and knowledge to properly classify your products or services and ensure that your trademark protection will be optimal.

Related classes and coexisting trademarks

Since, as previously stated, registering trademarks only affords protection for the goods or services included in the description filed with the local trademarks office, two very similar or even identical trademarks could coexist pacifically in the same territory, provided they are used to commercialize very different products or services. 

This is what happens with the Mont Blanc trademarks in France:

![Mont_blanc_trademarks.png](https://res.cloudinary.com/dudyf0uni/image/upload/v1721996697/Mont_blanc_trademarks_4abf967b6c.png)

Why can they coexist? Because no consumer will ever assume that this Mont Blanc dessert that can be found for a few Euros on the shelves of any French supermarket is produced by the same company that makes those high-end, expensive fountain pens sold in very exclusive shops. The coexistence of these trademarks is therefore not a source of confusion for the average consumer. The marks are registered in different classes for different goods. 

Does this mean that trademarks can automatically coexist if the products or services commercialized under them belong to different classes? 

It is more complicated than that. While the classification groups similar goods together, it does not mean that goods belonging to different classes cannot be related. For instance, beer belongs to class 32, while all the rest of alcoholic beverages belong to class 33. However, if you saw a bottle of tequila bearing the name “Corona”, you would immediately assume that it is produced by the famous beer company from Mexico. For this reason, it can be said that some products in classes 32 and 33 are intrinsically related, and an application filed in one of those classes can very well receive an objection if an identical or similar trademark already exists in the other class for related products, due to the possible confusion it could cause as to the origin of the products. 

Sometimes the relationship between products and services in different classes is more subtle. For example, if I were to try and register a trademark for a pet store called “Tefal”, I would in all likelihood have no problem registering it in class 35 (retail services). However, if my store, bearing that name, sold household appliances and cookware, then you would automatically assume that all the goods inside my store are made by the same company named Tefal that has been producing your electric kettle, toaster and pans (registered in class 11). For this reason, even if Tefal only had the mark registered for the products and not the store, it is very likely that my trademark application for a store that sells the same type of products would not be successful, as it would lead to consumers mistakenly associating one with the other. 

That is why even if you do not plan on registering in all the related classes, it might be a good idea to conduct a search for identical or similar trademarks in them, as the existence of such marks may very well be grounds for an objection or opposition to your application. 

It is worth mentioning that the policy regarding the coexistence of similar or identical trademarks varies from country to country. For example, in Switzerland the existence of a previous trademark registered for identical products will not be grounds for rejection. In that country, it is the responsibility of the previous trademark’s holder to oppose the new application. On the other hand, in countries like the USA or the UK, examiners tend to give more weight to the relation between products or services than to the class in which a trademark is to be registered. In the end, it is always advisable to seek the opinion of a local expert in order to determine whether a trademark can be registered according to the local practices and policies of each trademarks office.

Different countries, different rules
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Even within the framework provided by the Nice classification, there are some differences regarding the way it is implemented in various countries. For instance, China has their own sub-classes within each Nice class, and [trademarks can coexist within the same class](/trademarks-and-china-preventing-great-wall-laments "Coexisting trademarks in China") if the goods or services belong to different subclasses. 

The degree of detail and specification needed in a description will also depend on the jurisdiction. While in the European Union you could list your product as “downloadable software” and nothing more, in the USA you would be required to indicate what your software is for. That could make for an extensive list if you produce a lot of different types of software… 

These are only some examples of the differences to be considered. All in all, your trademark description should be tailored to the regulations of the trademarks office it will be filed with, and therefore it is advisable to enlist the help of a local trademark agent or attorney. 

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iGERENT offers trademark services in more than 180 countries. For further information [contact us](#contact-us-form "Contact us").

Understanding the nice classification and the importance of providing an accurate description of goods and services when filing a trademark.

Describing the Goods and Services Associated with a Trademark

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