Trademark Classes Needed when Registering Software Applications

Today, we are discussing one of the most important elements to consider while running a trademark search for the name of a mobile application or software program.  Within each trademark application, the applicant must identify the classes in which they are providing goods and services. Overall, the USPTO, an acronym for the United States Patent and Trademark Office, breaks all goods and services down into 45 different classes. 

When you file an application for a trademark, you need to designate which of these classes the trademark falls under.  These classes are also a critical aspect of the clearance search performed before filing the application as they help to hone the results and evaluate existing marks that could pose a risk to your application.

Also, as a quick disclaimer, even if your trademark appears to be in the clear for certain classes, it does not guarantee registration. Trademark law is inherently subjective, and each trademark application is thoroughly reviewed by an individual examining attorney from the US government–and you never know what they might find.

Relevant Classes for your Trademark Application

Let’s take a look at what classes are important when conducting a trademark search for an application or a software program. When looking to file an application for a type of software or mobile application, the two predominant classes you’re going to want to check are classes 9 and 42.

Now, what’s the difference between these two, and why do we need both of them? Well, class 42 covers software that is non-downloadable, such as online games or software programs hosted on websites. Class 9, on the other hand, covers downloadable software.

When performing a trademark search for any type of software, whether it is an app or SaaS, you should search in both classes.  This is because of the natural overlap and similarities between these two classes; if there’s a mark even remotely similar to your desired trademark that is already registered in class 42, even if you’re only looking to file in class 9, your application will likely get rejected anyway.

Other Class Considerations for your Application

Another class that can be advantageous to take a closer look at it is class 38, as it often covers internet services and would likely conflict with a mark overtly similar in classes 9 or 42.  While 38 may not pose as high of a risk as the other two, these marks are still worth noting when performing a robust risk assessment.

You can conduct a trademark search alone, but it is always highly recommended to use a trademark attorney.  You can always do a preliminary search on the USPTO websites yourself, but nothing beats a professional, attorney-facilitated clearance search with accompanying risk analysis. It has been statistically proven that enlisting the help of a trademark attorney is the single most effective way to improve your application’s chances of success.

If you have any questions regarding an application or wish to move forward with a trademark for your software or application, please contact an attorney at Gerben IP today for a complimentary consultation.

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Josh Gerben, Esq.

Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 10,000 trademarks and handled over 1,500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.