Hey everyone, this is Steve, Chief Paralegal here at Gerben Law Firm. Today I am going to look at one important element to consider when running a trademark search for the name of an APP or software program. This element is the “classes” you want to check out if you are performing this type of trademark search. So, what are the “classes”? Well, the USPTO, 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 class or classes the trademark falls under. Therefore, when conducting a trademark search, it is important to consider the appropriate classes for your particular product or service.
Also, as a quick disclaimer, even if your trademark appears clear in the classes I recommend looking at today, that doesn’t guarantee that it will get registered. Trademark law is inherently subjective, and each trademark application has to get reviewed by an examining attorney with the US government, and you never know what they might find.
Okay, now let’s take a look at what classes are important when conducting a trademark search for an APP or software program. The website we want to go to is the USPTO. I’ll include links to this in the comments section below, and then we want to check out here the trademark ID manual, because this is going to help show us which classes to look in. Now, right here I’ve already got software punched in, and we can see that the two predominant classes you’re going to want to check is class 09, and then way down here, class 42.
Now, what’s the difference? Well, class 42 is software that’s essentially non-downloadable. There are other things that it has, software consultancy, but this is non-downloadable, and class nine is downloadable. In the case of trademark search for any type of software (be it an APP or SaaS), you should search in both classes. This is because if there’s a mark remotely similar to your desired trademark in a class 42, if you’re registering it in 09, your application will likely get rejected.
Now, another class that I would highly recommend looking at would be class 38, and if we see this, past all these 09s, but if we come down here, now, it doesn’t look like much, but let’s read this sentence right here. “Internet services, namely providing access,” and let’s skip over here, “concerning the development and generation of computer software for use in businesses.” But this could definitely create a problem for you if there’s a similar mark registered in 38.
Now, as I always say, you can conduct a trademark search yourself, but I recommend using a trademark attorney. I’m partial to my brother here, Josh, because experience matters. As you can see, he’s got over 4,000 trademarks matters handled. Give him a call. It’s a free consultation. He’ll be happy to help you out.
Thank you guys very much for watching and check back soon for more videos.