How to determine the classification of a trademark registration based on the business field (industry)

How to decide which products and services to designate according to your business field

I want to register my company name as a trademark, but I’m stuck on the section called “designated goods or designated services and class of goods or services”.
What should I write?
If it’s a company name, you should file in the company’s business field.
I’ll explain how to choose from the business fields.

This article explains how to determine the designated goods/services for trademark registration according to your company’s business field.

Relationship between designated goods/services and business field

In order to protect your brand from third parties, it is advisable to obtain trademark rights for your name or logo.
However, you will need to carefully consider whether you should get protection for the extent to which you are “currently” using the trademark.

When registering a trademark, the goods or services must be designated.

When applying for trademark registration, it is necessary to designate “what” the trademark is to be used for.
Since a trademark is used to distinguish goods and services, in principle, it does not matter if more than one person uses the trademark as long as the business fields are not similar to or the same as those of others.

Therefore, it is necessary to designate the range of goods and services in which the trademark is used in order to determine whether the business field is similar to that of others.

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Fields of goods and services are further classified into “classes”.

The fields of goods and services are further divided into “classes” for each field.
When examining an application at the JPO, not one examiner is familiar with all fields, so examinations are generally divided by category.

Therefore, the business field of the trademark can be roughly identified by looking at the “classification” of the trademark application.

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It is important to first carefully consider the designated goods and services

When registering a trademark, the goods/services designated in the application are very important.
The goods or services you designate determine the scope of your trademark rights.
In other words, the validity of a trademark registration is greatly affected by the range of goods/services designated.

Moreover, the scope of the designated goods/services cannot be expanded after the application is filed.
(The time period for registration is approximately one to two years, so one should anticipate that time period.)
If the scope of your business is to be expanded, you will need to file additional applications.

However, if you file an application designating too many products, you may not be able to register it because you doubt whether you will use it or not.
It is important to decide on the products that you plan to use.

Generally speaking, it is advisable to determine whether or not you will use the product within 3 to 4 years of filing the application.

https://amazing.dx.harakenzo.com/guide/trademark-largenumber-classes/

How to choose the designated goods/services

House mark (company/business name)

The products and services to be designated should be decided according to the company’s business and type of business.
The scope of business written in the Articles of Incorporation may also be helpful.

For example,

In Explanation by Classification, you can see a list of which classification is recommended for which business field.

Pet Mark (Product Name)

In some industries, there may be many similar products or services.
In such cases, when registering a trademark, it is important to designate a distinctive word that distinguishes your product from others.
In this case, the product should be designated according to the category to which the product belongs.

https://amazing.dx.harakenzo.com/guide/petmark/

Refer to other companies’ applications

If you are not sure how to designate the product, it is also effective to search for registered trademarks on “J-PlatPat”, a trademark search database provided by the Japan Patent Office, for free.

You can check what kind of products other companies are designating by searching for the same category of products by “trademark”.

Okay, if someone has filed an application with a similar business scope before me, I can use their designated product as a reference.

However, please note that some product designations that were allowed in the past are no longer allowed today.

How to search if the designated product/service description is appropriate

If the description of designated goods/services is difficult to understand or inappropriate, you may receive a notice of reasons for refusal.

You can search whether the description of designated goods/services is appropriate or not from J-PlatPat’s Search by Product/Service Name.

Enter the product or service you wish to search for in the “Product/Service Name” field of the “Search Keyword” section.

If the product you want does not appear, do not give up and consult an expert.
Some expressions on J-PlatPat are unique to the JPO, so you may be able to find an appropriate expression just by changing the expression a little.

Choose the appropriate designated goods/services according to the business field of your company/products!

In trademark registration, you can only exercise your trademark rights within the scope of the goods or services you have designated.
Therefore, any new business or products that you may develop in the future must also be included in the scope of your trademark registration.
Otherwise, if a similar trademark is registered by another company, the company may not be able to enforce its trademark right against its newly developed business or products.

However, if you are developing a new product or service that has never been done before, you may not have a case to refer to. In such cases, it is important to consult an expert.
Other ways to protect your rights through trademark registration include prior research, maintaining regular trademark registrations, and managing the use of your trademark.
To take advantage of the trademark registration system and protect your business, please consult a patent attorney who is an expert in trademark registration.

Feel free to consult a patent attorney!

Are you worried about your trademark all by yourself?

If you have any problems, please contact our experienced trademark attorneys!

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How to determine the classification of a trademark registration based on the business field (industry)

This article explains how to determine the classifications and designated goods and services from the business field when applying for trademark registration.

supervisor
Supervisor for the article:
HARAKENZO WORLD PATENT & TRADEMARK
大阪法務戦略部長 八谷 晃典
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