Understanding goods & services selection

A registered trademark protects the brand only in the context of the categories of goods and services defined in the application. The underlying reason stems from the very purpose of trademark registration and that is to protect the distinctiveness of a brand and prevent consumer confusion. Similar trademarks used for different categories of products and services (e.g. restaurant and software company) are highly unlikely to create consumer confusion. Hence, the selection of particular goods and services represents a key part of the trademark registration process, consequently defining the scope of brand protection.

Established by the 1957 Nice Agreement, NICE Classification defines 45 categories of goods and services, providing the basis for their assessment by intellectual property offices. The first 34 classes cover physical products (goods) and the remaining 11 classes contain services categories. Each class contains several thousands of specific goods and services that also need to be defined on the trademark application. The choice of the right goods and services is arguably one of the most challenging parts of the trademark application process.

The number of the required classes of goods and services varies considerably between individual trademarks, depending on the scope of the brand’s operations. On average, owners of registered trademarks tend to register 2-3 classes, however, there are numerous well-diversified brands that have registered their trademarks in over 10 classes.

While the higher number of classes of goods and services included on the application increases the scope of brand protection, there are several shortcomings associated with this approach. First, the inclusion of each additional class of products and services into the application incurs an extra cost. While this additional fee is only marginal in numerous countries, the cost for extra class in the US is virtually identical to the registration of the first class. Secondly, the broader specification of goods and services to be protected by a trademark increases the risk of opposition. In other words, the likelihood that an identical or a similar trademark has been already registered increases with the growing number of classes included on the application.

The key recommendation for trademark applicants is therefore to focus on the categories of products and services that are core for the brand, and those into which the brand seeks to expand in the near future. Narrow specification of the selected goods & services (e.g. “SaaS platform for meal deliveries” as opposed to “software”) can further aid in ensuring the success of an application for trademark registration.

The table below presents an overview of the 45 classes included in NICE classification.