Which Class Should I File My Trademark In? Mobile App

Mobile apps are often treated both as goods and as services, depending upon the mobile app does and how it operates. For example, when the mobile app is downloadable it may be good and may then fall in IC 009 like you've noted. if the mobile app resides strictly in the cloud and is not downloaded, it is likely only a service and not a good. And depending upon the mobile app's purpose it may also fall in one of the service IC's such 041 or 042. You can file under one class, but the USPTO examining attorney may require to also file under additional classes during prosecution of the trademark registration application. This could be triggered by info in your class identification. This may be important for you from a budget perspective since the USPTO charges per class. If you have to amend your trademark registration application to include additional classes after you file you'll have to pay more money when making that amendment. And yes filing to register your trademark with other goods, such as clothing, can be done down the road, at a later date. However, most importantly, you want to clear use of your proposed trademark name prior to adopting and using that name in commerce - because without clearing that use, you could find yourself liable for trademark infringement to someone with superior rights in a confusingly similar mark. And that other mark might not even be registered. So when clearing your mark, you want to check not only the USPTO TESS database, but also each state's trademark databases, state's business entity registration filings, business names, trade names, domain names, social media, Dunn and Bradstreet listings, yellow pages, etc. And you want to check for variances in spelling, number of words, plurality, etc. Also, your proposed mark cannot be too descriptive of your planned goods/services.

Class 009 may be your best bet, but I advise before you make that selection that you read and study the Trademark Office website on how to pick the proper classification of goods/services at www.uspto.gov.

Previous responders give good advice regarding selection of a class. However, you should realize that filing the trademark protects the name of the app, or the logo, or the slogan - something which identifies it to your target audience. It does not protect the functionality, the idea, the programming, or the logic. These are very difficult to protect and you should meet with IP counsel to make sure that you are doing everything reasonable from to prevent someone from seeing your app, figuring how it works, writing their own implementation and titling it something totally different than yours.

In general, 9 is a must while 41 (video game/entertainment services) and 42 (SAAS and PAAS) are very common second classes to register in, but check to see which of the services classes (35-45) may be appropriate for your app. Hiring a lawyer to do your goods/services classifications (which should be included in your trademark application service) is important because that is the most crucial part of your application and later right.

I would wary of relying on any sight unseen advice you get here, but IC 009 is likely the correct class, but there can always be issues that make a difference. I mean, identifying the appropriate class(es) is one of the things our clients hire us to figure out. Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance. Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide. I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with. Best regards, Frank Natoli-Lapin, LLC

While IC 9 may be the right class, I cannot be sure without looking at all the factors before advising you. You should retain a trademark counsel to represent you. In starting a business trademark protection is one of the most important steps that you can take. Don't short change yourself. Spend the money, it will be worth it!