Selecting your goods and services
Like Australia, the US uses the Nice Classification System. Goods and services are divided into 45 classes; 34 goods classes and 11 service classes.
In the US it’s critical that you clearly identify the precise goods and/or services to which your trade mark will apply. In some countries, it’s common to list the class heading (the description of everything that the class covers) and claim all items in that class for your trade mark. Such broad claims will not be accepted by the US. Your list of goods and service will need to be specific and concise about which items in each class you are claiming for your trade mark.
Before you begin, think carefully about the goods or services you want protected by your trade mark. If you seek to register a trade mark in the wrong class, your application will be cancelled and your fee will not be refunded. So, getting the classification right when you apply can save you time and money.
To choose the correct class for your goods or services, firstly decide whether your trade mark applies to a good, a service, or both. A good is a physical item that people purchase from you. A service is an activity that you perform for other people. The USPTO uses the example of T-shirts. If you sell t-shirts you are providing a good. If people bring T-shirts to you and you custom print them, you are providing a printing service. If you sell T-shirts and also print designs on them, you may need to register trade marks for both a good (T-shirts) and a service (printing).
There are some services that you will use in the course of your business, but this doesn’t mean that you need to register your trade mark for these services. An example of this is advertising your own goods. You are not providing a commercial advertising service to others, you are promoting your own goods. Even though you might advertise your T-shirts for sale doesn’t mean that you will need to register your trade mark for advertising.
Some helpful questions to ask when deciding your goods or services include:
- What products or services does your business provide?
- What is the nature of your business?
- What are you known for by your customers/clients?
- Where do you derive your business income?
To assist with classifying your goods or services, you can search the USPTO’s Identification of Goods and Services Manual (ID Manual) to find the goods or services that you want to claim.
The ID Manual also provides general guidance as to the appropriate classification of particular goods and services.
It's important to note that close enough is not good enough – the class you choose must accurately describe your goods or services or you may not be granted a trade mark and your fee will not be refunded. The US will not accept broad claims, such as ‘clothing’.
If you chose to use the Madrid Protocol to apply, your international application will be based on the goods or services in your Australian trade mark application or registration (known as the basic mark).
You may decide to include all the goods or services claimed in your basic mark(s) or only some. However, the goods or services listed must be covered by the basic mark(s). This means the list may contain fewer goods and services, but cannot be broader or contain entirely different goods or services than those covered in the basic mark(s).
You can also request a limitation to the list of goods or services for a particular country. For example, you may include Classes 3 and 25 in your international application but decide to limit the list to only Class 25 for the US.
While both the Madrid Protocol and the US use the Nice Classification, there is still a possibility that you may encounter issues with your goods and/or services classifications.
WIPO will review your international application and if they consider items in the list of goods and/or services to be too vague, incomprehensible, linguistically incorrect, or incorrectly classified, an irregularity notice will be issued to you (or your representative). You may be asked to refine or narrow your goods and/or services, provide more information,or indicate items are correctly classified in another class.
The US will also review the classification of your international registration during their examination of your international registration and will issue to you an Office action if items in the list of goods and services are considered to be too broad. The US will propose to narrow your goods and/or services or ask for more information.
It is important to note that the US may not accept certain terms even though these same terms were considered acceptable in your Australia application or registration (or vice versa).
Find out more about responding to official letters.
Searching using the Madrid Goods & Services Manager WIPO’s Madrid Goods & Service Manager (MGS), based on the Nice Classification system can assist you in compiling and verifying the goods and/or services you want to use in your international application. All terms found in the MGS are accepted by IP Australia. Additionally, the MGS also allows you to search for goods and/or services that are accepted by other members of the Madrid Protocol, including the US.
Madrid e-filing If you chose to file an international application designating the US (or other countries), this can be filed via Madrid e-filing (accessed through IP Australia’s online services). Madrid e-filing is IP Australia's preferred channel for submission of international applications.
For more information on the lodge process, please refer to the Madrid e-Filing User Guide.
Tips for selecting your goods and services categories
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