How to conduct Trademark Search using NICE Classification?

Trademark Search Process

The trademark registration process begins with a trademark search for brand name, logo and tagline. Trademarks form an important part of intellectual property rights that need statutory protection under the trademark law. To conduct a thorough trademark search, it is advisable to consider all the possible keywords and search these in different combinations in all the relevant classes of goods or services of the NICE classification, as applicable. The trademark search results require comprehensive analysis as it can pave the way forward for a strong trademark registration worldwide.

Importance of Conducting Trademark Search

It is crucial to determine the availability of a particular brand name before filing for trademark protection. For companies with a portfolio of trademarks, conducting trademark searches for new brand names is important because it forms part of business strategy to prevent trademark infringement. In a scenario of trademark infringement or misuse of brand names, the first step is to send a cease and desist notice to the offending party. The results of trademark search also reveal multiple trademarks that have been filed corresponding to a particular keyword. For example, during March 2020 to April 2020, there was a rush to file trademarks including the trending keywords like Covid, Corona, and the like.

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trademark search process

NICE Classification of Trademarks

Nice Classification of goods and services represents international classification for registration of trademarks. Depending upon the business activities, it is critical to decide the most relevant class or classes. For example, online retail services may fall within the scope of class 35, whereas physical goods that are sold online may fall under different class of physical goods, i.e. between class 1 to class 34. Essentially, services are defined in class 35 to 45, whereas products are covered under class 1 to 34.

Selecting a Brand Name

What is a Brand? A unique name, phrase, logo, symbol, or any attribute that identifies one producer of a product or service as distinctly different from those of others. The legal terminology for Brand is a trademark. Trademarks may be registered in the United States with the United States Patent and Trademark Office (USPTO).

Once you have decided upon a Brand, it is best to consult with legal counsel or a trademark attorney to determine whether you need to protect your Brand before you register it. There are various ways in which to create a distinctive Brand. The simplest way is to build on prior experience and develop a clear understanding of how your firm or organization works and will do in the future. It is important to clearly define the purposes of your branding strategy from the outset and to consider its implications for your organization. You should also consider whether your Brand has an edge over similar businesses that may be pursuing similar market objectives, in terms of cost, customer relations, or technology.

A number of business firms and marketing agencies offer expertise in developing a strong and coherent brand identity and leveraging it to the greatest degree possible. Some of these brands have been around for several decades, while others have only achieved high recognition recently. Many of the most successful brands in the world today got their start by developing an effective and consistent branding strategy.

Branding Your Business Name

One of the biggest decisions when it comes to launching your own company is coming up with a strong business name. In many instances, we are so caught up in being excited about starting a new venture that we sometimes forget to pay attention to the basics. Too often, we push ourselves into thinking up catchy, unique, unforgettable names, only to later fall back upon ourselves and worry that we have made a mistake. But, before we get creative juices running, it is important to step back and examine some of the more fundamental aspects of selecting a good business name. For example, does your business name accurately reflect your industry?

Consider the fact that the name of an apple is unique and fitting for a technology company as opposed to a hardware or service company. Are you aware that over three-quarters of all product searches contain the word “apple”? If you aren’t aware of this fact, perhaps you should become familiar with it. This simple, yet profound fact can be the key to generating brand awareness and establishing trust within your customer base.

The next time you are trying to generate interest for your company name, consider a clever name that evokes images and ideas associated with what you are promoting. By associating your brand with other well-known products, such as an apple, you are creating an image that customers are sure to identify with. Not only is this a smart branding move on your part, but it is also likely to help you secure more funding for your business in the future. As any business owner can attest to, building brand awareness is vital for long-term success.

Trademark Classification Index

A brief illustration of each class is stated below. As listed therein, following are the headings of each class:

Class 1 includes mainly chemical products for use in industry, science and agriculture, including those which go to the making of products belonging to other classes.

Class 2 includes mainly paints, colorants and preparations used for protection against corrosion.

Class 3 includes mainly non-medicated toiletry preparations, as well as cleaning preparations for use in the home and other environments.

Class 4 includes mainly industrial oils and greases, fuels and illuminants.

Class 5 includes mainly pharmaceuticals and other preparations for medical or veterinary purposes.

Class 6 includes mainly unwrought and partly wrought common metals, including ores, as well as certain goods made of common metals.

Class 7 includes mainly machines and machine tools, motors and engines.

Class 8 includes mainly hand-operated tools and implements for performing tasks, such as drilling, shaping, cutting and piercing.

Class 9 includes mainly apparatus and instruments for scientific or research purposes, audiovisual and information technology equipment, as well as safety and life-saving equipment.

Class 10 includes mainly surgical, medical, dental and veterinary apparatus, instruments and articles generally used for the diagnosis, treatment or improvement of function or condition of persons and animals.

Class 11 includes mainly environmental control apparatus and installations, in particular, for the purposes of lighting, cooking, cooling and sanitizing.

Class 12 includes mainly vehicles and apparatus for the transport of people or goods by land, air or water.

Class 13 includes mainly firearms and pyrotechnic products.

Class 14 includes mainly precious metals and certain goods made of precious metals or coated therewith, as well as jewellery, clocks and watches, and component parts therefor.

Class 15 includes mainly musical instruments, their parts and their accessories.

Class 16 includes mainly paper, cardboard and certain goods made of those materials, as well as office requisites.

Class 17 includes mainly electrical, thermal and acoustic insulating materials and plastics for use in manufacture in the form of sheets, blocks and rods, as well as certain goods made of rubber, gutta-percha, gum, asbestos, mica or substitutes therefor.

Class 18 includes mainly leather, imitations of leather and certain goods made of those materials.

Class 19 includes mainly materials, not of metal, for building and construction.

Class 20 includes mainly furniture and parts therefor, as well as certain goods made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic.

Class 21 includes mainly small, hand-operated utensils and apparatus for household and kitchen use, as well as cosmetic and toilet utensils, glassware and certain goods made of porcelain, ceramic, earthenware, terra-cotta or glass.

Class 22 includes mainly canvas and other materials for making sails, rope, padding, cushioning and stuffing materials and raw fibrous textile materials.

Class 23 includes mainly natural or synthetic yarns and threads for textile use.

Class 24 includes mainly fabrics and fabric covers for household use.

Class 25 includes mainly clothing, footwear and headwear for human beings.

Class 26 includes mainly dressmakers’ articles, natural or synthetic hair for wear, and hair adornments, as well as small decorative items intended to adorn a variety of objects, not included in other classes.

Class 27 includes mainly products intended to be added as coverings to previously constructed floors and walls.

Class 28 includes mainly toys, apparatus for playing games, sports equipment, amusement and novelty items, as well as certain articles for Christmas trees.

Class 29 includes mainly foodstuffs of animal origin, as well as vegetables and other horticultural comestible products which are prepared or preserved for consumption.

Class 30 includes mainly foodstuffs of plant origin, except fruits and vegetables, prepared or preserved for consumption, as well as auxiliaries intended for the improvement of the flavour of food.

Class 31 includes mainly land and sea products not having been subjected to any form of preparation for consumption, live animals and plants, as well as foodstuffs for animals.

Class 32 includes mainly non-alcoholic beverages, as well as beer.

Class 33 includes mainly alcoholic beverages, essences and extracts.

Class 34 includes mainly tobacco and articles used for smoking, as well as certain accessories and containers related to their use.

Class 35 includes mainly services rendered by persons or organizations principally with the object of:  1. help in the working or management of a commercial undertaking, or  2. help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services.

Class 36 includes mainly services relating to banking and other financial transactions, financial valuation services, as well as insurance and real estate activities.

Class 37 includes mainly services in the field of construction, as well as services involving the restoration of objects to their original condition or their preservation without altering their physical or chemical properties.

Class 38 includes mainly services that allow at least one party to communicate with another, as well as services for the broadcasting and transmission of data.

Class 39 includes mainly services for the transport of people, animals or goods from one place to another by rail, road, water, air or pipeline and services necessarily connected with such transport, as well as the storing of goods in any kind of storage facility, warehouses or other types of building for their preservation or guarding.

Class 40 includes mainly services rendered by the mechanical or chemical processing, transformation or production of objects or inorganic or organic substances, including custom manufacturing services. For the purposes of classification, the production or manufacturing of goods is considered a service only in cases where it is effected for the account of another person to their order and specification. If the production or manufacturing is not being performed to fulfil an order for goods which meet the customer’s particular needs, requirements, or specifications, then it is generally ancillary to the maker’s primary commercial activity or goods in trade. If the substance or object is marketed to third parties by the person who processed, transformed or produced it, then this would generally not be considered a service.

Class 41 includes mainly services consisting of all forms of education or training, services having the basic aim of the entertainment, amusement or recreation of people, as well as the presentation of works of visual art or literature to the public for cultural or educational purposes.

Class 42 includes mainly services provided by persons in relation to the theoretical and practical aspects of complex fields of activities, for example, scientific laboratory services, engineering, computer programming, architectural services or interior design.

Class 43 includes mainly services provided in relation to the preparation of food and drink for consumption, as well as services for providing temporary accommodation.

Class 44 includes mainly medical care, including alternative medicine, hygienic and beauty care given by persons or establishments to human beings and animals, as well as services relating to the fields of agriculture, aquaculture, horticulture and forestry.

Class 45 includes Legal services; security services for the physical protection of tangible property and individuals; personal and social services rendered by others to meet the needs of individuals.

Importance of Trademarks During Marketing

Marketing refers to various activities a business undertakes to advertise the sale or purchasing of a product, service, or just simply an idea. In popular usage, marketing has been used to refer to advertising. However, it is a wider concept which includes branding, selling, and public relations. In recent years, The New York Times has defined it as the art of “telling stories so enthralling that individuals lose sight of their wallets.”

Branding: A brand is a consistent image that conveys a message to the targeted audience. It helps customers identify with your product or service, thus increasing your sales. Branding in the internet marketing context is a critical component of your internet marketing strategy. For example, if you are an online auction site, then your logo is your brand. Similarly, if you are an online lending service, then your brand is the lending service logo. From legal perspective, trademark provides the appropriate protection for a brand.

Digital Marketing: Digital Marketing is one of the latest marketing concepts. In this modern marketing paradigm, a business can engage into a number of activities to reach their potential customers. One such activity is web marketing that provides a platform for businesses to develop and deliver their messages directly to their potential customers by using unique brands eligible for trademark protection.

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