(The following is a transcript of the video.)
Greetings! Its Steve, chief paralegal and researcher here at Gerben Law Firm. And today we are going to look at how to run a trademark search for clothing.
Just as an overview, the government breaks all products and services down into 45 different classes.
So what we’re going to do today, (and these are called “international classes,”) is look at the ones that are really applicable to clothing. As a quick disclaimer, I’m going to point out some of the classes that I would recommend looking heavily in, whether or not a trademark conflicts with another trademark is inherently subjective. All trademark applications have to be reviewed by an examining attorney, and, they may reject the application for some reason that we just can’t predict. So while I am going to point out some classes, know that just because your trademark search clears those particular classes doesn’t guarantee it will be approved by the USPTO examiner.
The first thing we are going to look at is the trademark ID manual (I will include links to this in the comments section below). And what you can is put in the product or service that you’re looking for, and boom, you will see all these different classes.
Now, the main one for clothing is 025, as you could see here. Clothing for a slew of different things. One other class that we absolutely want to look at would be 35. This is because class 35 is for retail store services.
And as you can see here, we’ve got retail clothing boutiques, retail clothing stores.
So if you have a trademark of a similar name that’s simply registered in 35 for the name of a retailer of clothing, and you’re trying to register in 25, it will still likely get rejected. Another important pair of classes to look at, so those are the two main ones…we also, however, if I’m running this for a client, really want to check out class 18.
Now here it says bags and holdalls, but this is really pocketbooks, purses, so clothing accessories, essentially. That’s also why we would want to check out class 14 which covers jewelry. Finally, we also generally consider class 09, which will be like protective clothing, as you could see here, work garments.
So those are the main classes, but I want to also point something out to you here. This is the free-form search page. I have a different video that I’m making on how to actually enter in all this information using the Boolean search terms here that you can check out.
But for now, I want to show you why this, even if you’ve entered in clothing and you’ve got all these classes here, is not a dependable system. Let’s imagine you are attempting to register something that has to do with barn for clothing. So here we would go in and we would enter barn and look for live trademarks.
And then here’s our international class 042, and we’re doing a good services limiter of retail. And I’ll just show you why.
Now when we click submit, we’re going to go down here. And we’re going to take a look at this guy right here, Dress Barn. Look at this. This is an international class 042, retail outlet services in the field of women’s apparel.
Now this, if we were attempting to register anything barn, this would be a problem. This would most likely get us rejected.
But let’s go back here. Let’s look at this, 042, nothing. It doesn’t say anything about that. Well why is that? Well first of all, this doesn’t say clothing it says apparel. Second of all class 042 for retail goods is outdated.
So this was registered in 1985.
This would be now class 35, if they were to register it currently. But this is something that you’ve got to be on the lookout for: an old, outdated retail store service in class 42.
This is another reason why we do recommend using an attorney. It’s not rocket science to do a trademark search, but it is tedious. And being able to identify all the potential issues in a trademark search comes with experience.
If you use Gerben Law firm, we use professional-grade search software. The search software allows us to do things like vowel replacements and phonetic searches to be really, really more thorough than you can be just using the free-form search on the US PTO.
So give Josh a call. It’s a free consultation.
Thank you guys very much for watching, and check back soon for more videos. Read a recent post on performing a trademark search on beer / breweries.