Nice Trademark Classes

Welcome to the International Nice Trademark Class system, where we attempt to fit all types of goods and services into only 45 different classes. The results can be a bit strange!

As previously discussed, trademarks help protect the public from accidentally purchasing inferior products from unscrupulous business. Trademarks also help protect legitimate business from inferior knockoffs as well.

As economic growth and international trade expanded, trademark law encountered problems.  There were more products and services than there were good trademark names. To solve this problem, governments created legal mechanisms to allow similar trademarks to co-exist.  To prevent customer confusion, governments only allowed similar trademarks when the products or services were very different.

Thus, the trademark classification system evolved to allow at least some recycling of similar trademark names. But again, between very different types of products and services. The underlying concept is somewhat similar to the idea of “area codes” and “swim lanes”.  Think of all economic activity as being a “swimming pool”. The trademark classes divide up this swimming pool into a series of defined “swim lanes”. Any given area of economic activity thus has its own designated “swim lane” (trademark class).

The Nice classification system

Originally, every country defined its own country-specific trademark classes (swim lanes).  This created a lot of international trade confusion. To standardize this process, various countries met in Nice France in 1957. They adopted an earlier (1935 era) proposal and established a standardized list of 34 different trademark classes. This was originally just for trademarked goods. Later, governments extended the Nice system to add 11 additional trademark service classes. This brings us up to the present total of 45 goods and services. So at present, the trademark swimming pool (“all of commerce”) has 45 swim lanes. Trademark experts call this the “Nice Classification”.

As you might expect from a 1935-era based classification system, it is a bit dated. Products in general use before 1935 tend to get more than their fair share of different trademark classes. More modern products and services tend to get crammed into a relatively small number of trademark classes. But this is the internationally standardized trademark law system we have, get used to it.

Why do we care?

Nice trademark classes are important when registering new trademarks. They are also important when trying to see if there are conflicts between trademarks. As a rule of thumb, if two similar trademarks describe products or services that fall into different Nice classes, then (in theory) this is OK.  Traditional trademark law will tend to assume that customers will not be confused.  But if two similar trademarks describe products or services that fall into the same Nice class, things may not be OK. There may be a possibility of confusion.

Look out for “coordinated classes.”

Unfortunately, the USPTO does not entirely respect the traditional Nice framework. Instead, USPTO examiners generally search for a broader range of Nice classes. They call this broader range the “coordinated class.” These are classes that, by “statistical analysis,” the USPTO has “determined” are often associated with a given class. For example, if you file for a downloadable software app in class 9, the USPTO computerized search system will automatically search for conflicts in class 9 and classes 10, 16, 28, 25, 38, 41, 42, and 44.

Although the legal status of “coordinated classes” is uncertain, the USPTO search system encourages examiners to look more broadly. Indeed, although the US ratified the Nice Agreement in 1983, and the US trademark application system is based on Nice classes, the present US Trademark Manual of Examining Procedure (TEMP) otherwise avoids the topic. One reason may be that the USPTO Trademark legal system is based mainly on previous Federal Court decisions, which rely on other previous Federal Court decisions. The legal system moves slowly, and the 40+ years since ratification may just be “too soon.” Remember that you are going for an (R), and pirate rules may apply.

As a result, US trademark examiners will frequently issue at least initial rejections based on other trademarks in different Nice classes but similar “coordinated classes.” Indeed, sometimes, the examiners will even step outside the coordinated classes. This is one of the unique features of the USPTO trademark examination process that makes the US more difficult than other countries.

If you get a “coordinated class” rejection, you can still attempt to rebut based on an analysis of the “Dupont Factors.” However, the rebuttal process is more subjective and can vary by examiner.

So, if you are filing a new trademark, it is crucial to specify what types of goods and services you are selling or planning to sell.  This allows the attorney to determine the Nice class (and coordinated class) for these goods and services.  A proposed trademark that may be fine for some Nice classes could be a total non-starter for other Nice classes.