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Trademark Clearance Search Including Coordinated Class
Overview:
A Coordinated Class is a group of more than one International Class, where the International Classes within a Coordinated Class are meant to be more similar to each other than other International Classes.
Trademark Clearance Search General Strategy - With a Search Including Services - Using an International Class:
A trademark clearance search will determine if there is likelihood of confusion which is a combination of the similarity of the mark and similarity of the goods or services associated with the mark. A way to limit trademark clearance search results, to narrow results and review more relevant results, is to search in a class of a good or service. Each trademark record has a description of the goods or services and those goods and services are categorized into an International Class. The International Classes for goods are categorized into classes 001 to 034. The International Classes for services are categorized into classes 035 to 045. For example, for goods, International Class 012 are the goods of Vehicles, and International Class of 024 are the goods of Fabrics. For example, for services, International Class of 037 are the services of Construction and Repair, and International Class of 036 are the services of Insurance and Financial.
Trademark Clearance Search - With a Search Including Services - Using a Coordinated Class:
A trademark clearance search will include an element of the mark (the words, numbers, or design) and the goods or services. Likelihood of confusion occurs when the marks are similar and the goods or services associated with that mark are similar. This dual similarity is why a clearance search includes both elements. One way to include the element of the good or service in the clearance search is including the International Class which the good or service will be categorized under. A clearance search may be targeted as broad as possible, so instead of only including the International Class, a Coordinated Class can be used instead to define the good or service, which will cause a broader search.
A Coordinated Class is a group of more than one International Class. The International Classes within a Coordinated Class are meant to be more similar to each other than other International Classes.
Example:
Coordinated Classes are searched for by searching the International Class the good or service would be categorized under and then searching under the Coordinated Class which is indicated by the field of [CC].
So, if the good is normally categorized in the International Class of 028 of Toys and Sporting Goods because the good is board games, the search in the Coordinated Class would be 028[CC], then the International Class of 028 and the associated International Classes of 009, 016, 020, 025, 035, 041, and 042.
For Coordinated Classes, for the 028 International Class of Toys and Sporting Goods it’s considered that 028 IC includes similar goods and services to those other classes of:
- 009 Electrical and Scientific Apparatus;
- 016 Paper Goods and Printed Matter;
- 020 Furniture and Articles Not Otherwise Classified; 025 Clothing;
- 035 Advertising and Business;
- 041 Education and Entertainment; and
- 042 Computer, Scientific and Legal.
Therefore, for the example clearance search for a board game, a search in the Coordinated Class may have the advantage of finding a conflict with a service of an Entertainment company which provides the service of Entertainment services, namely, providing an on-line board game, which is classified in 041, where if only the International Class for board games (028 Toys and Sporting Goods) was searched, then that potential conflict would not be found.
Search Examples to Explain Searching in a Coordinated Class
To exemplify how a clearance search using the Coordinated Class [CC] provides a broader variety of associated trademarks, an example search for the word element of “round” was searched by International Classes, and then the Coordinated Classes for filings from 1/1/2018 to 12/31/2022 through TESS.
Conducting the initial search of each International Class separately, the word element “round” appeared the most frequently in IC 009 Electrical and Scientific Apparatus with 66 instances, with all subsequent classes being less, or having no word element usages of “round” at all, as was the case for IC 002 Paints, IC 017 Rubber Goods, IC 022 Cordage & Fibers, IC 023 Yarns and Threads. However, once a search was done as a Coordinated Class [CC] search, every category, even the ones that yielded none as an International Class [IC] search, still resulted in increased findings. For example, a Coordinated Class search of 002 Paints (IC search equaled 0) resulted in 120 instances, as the search field was expanded to other “like” or similar categories that included: 017 Rubber goods, 019 Non-metallic building materials, 035 Advertising and business services, 037 Construction and repair services, 040 Material treatment services, 042 computer, scientific and legal services, A Goods certification marks, B Services certification marks, and 200 Collective membership marks.
Each Coordinated Class has several comparable categories that are searched simultaneously, however, the number of comparable categories varies for each class of goods.
All coordinated class searches include the same three categories - A Goods certification marks, B Services certification marks, and 200 Collective membership mark classes – but the remaining categories are based on similarity.
Coordinated Classes searches for 011 Environmental Control Apparatus or 030 Staple Foods conducts a search of 12 classes each, while a coordinated search for 034 Smokers’ Articles only searches six categories. Therefore, coordinated class searches for classes that have multiple similar classes will yield a greater number of findings, regardless of the initial International Class search results.
On the contrary, when doing a coordinated class search in ANY of the International Class Service categories, the coordinated class configuration is the same for all. As seen in the search above, each Coordinated Class search yielded 276 findings. Regardless of the International Class number for services, a coordinated class search will always examine all of the IC service classes.
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