Michael E. Byczek, Attorney at Law

Two companies cannot use the same mark for the same type of commercial activity. It is very important to perform a search before submitting an application, or even starting a business. You could be infringing upon another company's trademark. Applications are denied if your mark is the same or confusingly similar to another trademark.

A comprehensive search analyzes both registered and unregistered trademarks. Just because a company didn't file a federal registration, does not mean you are free to use the name. Searches examine Internet results, phone books, magazines, trade publications, domain names, business licenses, catalogs, etc.

The USPTO online registration database is called TESS (Trademark Electronic Search System), which displays both active and expired trademark and service marks.

The World Intellectual Property Organization (WIPO), a specialized agency of the United Nations has an international resource called the Global Brand Database.

Classification

The USPTO uses an international classification system based on the Nice Agreement published by the WIPO to index all trademarks.

This classification system has 45 different categories for goods and services. Each trademark is assigned to one of these 45 categories.

However, that category is not enough. Each registration requires a written explanation that describes how the trademark is used in commerce within that classification category.

Examples

Consider the trademark IPHONE that is owned by Apple Inc. Every registration can only have one primary purpose, such as one classification. The same term can be registered numerous times under different classification categories and refer to both trademarks and service marks.

Below are five examples of how Apple registered the same term using different classifications and written descriptions.

IPHONE (#5015541) registerd on 8-9-2016 as a service mark

IPHONE (#3736978) registered on on 1-12-2010 as a service mark

iPhone (#3669402) registered on 8-18-2009 as a trademark

Logo of an Apple with the iPhone word (#3746840) registered on 2-9-2010 as both trademark and service mark (application explained that the apple logo was depicted with a bite removed)

IPHONE (#4368745) registered on 7-16-2013 as a service mark

Classification Index

These are the 45 classification categories that all trademarks are registered.

Goods

Services