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Would you like to know what trademarks in Class 35 of the Nice Classification cover?
In this video, I'm gonna give you the details about just that.
So Class 35. Before I go through a bunch of legalese, here's my summary of three core services covered by a class 35. Retail and wholesale of your and others’ products; number two: advertising services provided to others; and three: consulting in the field of business management and organization. A good example for class 35 in respect of retail and wholesale is Walmart or Amazon. That's their primary class. As far as class 35 goes, it doesn't matter if they sell products made by Walmart or marked by Walmart trademark. What matters is that all these products are being sold in a store that has a Walmart sign at the entrance. That's why Walmart can sell their products; they can sell other company's products; but they've owned the trademark in Class 35 for retail sales and that allows them to make sure that nobody can open another store and call it Walmart, okay?
To make it even clearer, think of Nike t-shirts, that's Class 25. So if Nike owns a trademark in Class 25, it means that anyone else can make and sell t-shirts, it's just no one can brand them as Nike. Now class 25 trademark would probably be sufficient to stop someone else from opening a sporting goods store but it would not stop someone else from opening a grocery store called Nike. On the other hand, if Walmart owns a trademark in class 35 for retail sales of shirts, it means anyone can sell t-shirts is just no one can sell them in a store called Walmart. Class 35 trademark alone would in theory make it difficult for Walmart to do anything if an apparel company decided to start making and selling t-shirts branded as Walmart. And when I say in theory here's what I mean, the more well-known the brand, the broader the protection. At this point, if Walmart only had a class 35 trademark, they would still be able to use it against anyone who would be stupid enough to make any products sold in Walmart stores. But this is an exception. Also, important to know that advertising services in class 35 only cover services provided to others. What you do to promote your own services does not fall under class 35. For example, if you're a trademarking company and you shoot videos to make more people know that you exist, you are not rendering at class 35 service, you're still within the realm of class 45 which covers offering legal service or maybe class 41 which covers educational services but just because you use these videos to advertise your products or advertise your services to promote your brand doesn't put you in class 35. Okay? And finally class 35 does not cover all possible types of consulting. In fact, consulting services are spread around several classes from class 35 to class 45 based on the subject matter of such consulting. For example, consulting in the field of finances is class 36. Or consulting in the field of Internet security is class 42. Now intellectual property consultancies class 45. You see how this works? So class 35 consultancy is only generally about building a business as a whole. I hope this makes sense and clarifies what I'm about to go through now.
The official header of the class goes like this: advertising; business management; business administration; office functions. According to the official explanatory note, class 35 includes mainly services rendered by persons or organizations principally within the object of: one, help in the working or management of a commercial undertaking, or two, 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 and services. Now you can tell right away this is an extremely broad and that the language used is rather archaic. Now if you haven't had enough, prepare for some more legalese because the explanatory note continues with the following statement: This Class includes in particular: -the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets through vending machines, mail-order catalogues or by means of electronic media, for example, through web sites or television shopping programmes; services consisting of the registration, transcription, composition, compilation or systematization of written communications and registrations, and also the compilation of mathematical or statistical data; services of advertising agencies and services such as the distribution of prospectuses, directly or through the post, or the distribution of samples. This class may refer to advertising in connection with other services, such as those concerning bank loans or advertising by radio. Finally, the explanatory note says that this Class does not include, in particular: services such as evaluations and reports of engineers which do not directly refer to the working or management of affairs in a commercial or industrial enterprise. I can solve the alphabetical list of services.
Now speaking of the alphabetical list, here are the services that fall under class 35. And what you'll notice is that some of these entries apparently have nothing to do with what the header says. They just had to stick these services into one of the classes and thought that class 35 would be the best fit for it. Here we go, ready? These are the services that can be trademarked in Class 35: -administration of frequent flyer programs; administration of consumer loyalty programs; administrative processing of purchase orders; administrative assistance in responding to calls for tenders; administrative assistance in responding to requests for proposals; advertising; publicity; advertising agency services; publicity agency services; rental of advertising space; advertising by a mail-order; rental of advertising time on communication media; production of advertising films; appointment scheduling services [office functions]; appointment reminder services [office functions]; auctioneering; bill posting; rental of billboards [advertising boards]; bookkeeping / accounting; business management assistance; business inquiries; business auditing; business management and organization consultancy; business management consultancy; business efficiency expert services; business appraisals; business investigations; business organization consultancy; business research; advisory services for business management; professional business consultancy; business information; business management of hotels; business management of performing artists; business management of sportspeople; business management for freelance service providers; business project management services for construction projects; providing business information via a website; business management of reimbursement programs for others; business intermediary services for relating to the matching of potential private investors with entrepreneurs needing funding. Alright, so when they came up with that, when somebody built their first website, that was matching potential private investors when entrepreneurs need funding. Ok, where does it go? Class 35. Let's keep going, commercial information agency services; commercial or industrial management assistance; commercial information and advice for consumers and the choice of products and services; commercial administration of the licensing of the goods and services of others; provision of commercial and business contact information; commercial intermediation services; commercial lobbying services; competitive intelligence services; compilation of information into computer databases; compilation of statistics; compiling indexes of information for commercial or advertising purposes; computerized file management; consultancy regarding public relations; communication strategies; consultancy regarding advertising communication strategies; corporate communication services; cost price analysis; data searching computer files for others; demonstration of goods; design of advertising materials; direct mail advertising; dissemination of advertising matter; distribution of samples; document reproduction; drawing up off statements of accounts; economic forecasting; employment agency services; financial auditing; gift registry services; import-export agency services; interim business management; invoicing; layout services for advertising purposes; what does that mean? market studies; market intelligence services; marketing research; marketing; marketing in the framework of software publishing; media relations services; modeling for advertising or sales promotion; negotiation and conclusion of commercial transactions for third parties; negotiation of business contracts for others; see, they're making very clear that it's for others. When you're negotiating your own contract, you're not rendering a Class 35 service. But, if you're a negotiator and let's say company A hires you to negotiate with Company B, then you're providing a Class 35 service. News clipping services; arranging newspaper subscriptions for others; office machines and equipment rental; rental of office equipment in co-working facilities; online advertising on a computer network; provision of an online marketplace for buyers and sellers of goods and services; Amazon eBay. Online retail services for downloadable digital music (so, this is downloadable digital music); online retail services for downloadable ringtones; online retail services for downloadable and pre-recorded music and movies; opinion polling; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial and advertising purposes; organization of fashion shows for promotional purposes; outdoor advertising; outsourced administrative management for companies; outsourcing services [business assistants]; pay-per-click advertising (hello Google); payroll preparation; personnel management consultancy; personnel recruitment; photocopying services; rental of photocopying machines; presentation of goods on communication media, for retail purposes; price comparison services; procurement services for others [purchasing goods and services for other businesses]; promotion of goods and services through sponsorship of sports events; psychological testing for the selection of personnel; public relations; publication of publicity texts; publicity material rental; radio advertising; registration of written communications and data; relocation services for businesses; retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies; retail services for works of art provided by art galleries; sales promotion for others. Again, when you sell your own products and services, it's not a class 35. But if you are a closer, for example, if you are a student of Dan Lok, my mentor, you've gone through his High-Ticket Closer program, and now you can close for others, that makes it a class 35 service. So, for example if you got a company, if you've got a name for your own brand as a closer and you want to promote it and you want to protect it, that would be a trademark in Class 35. Rental of sale stands; scriptwriting for advertising purposes; search engine optimization for sales promotions / search engine optimization for sales promotion; secretarial services; shop window dressing; shorthand; sponsorship search; arranging subscriptions to telecommunication services for others; systemization of information into computer databases; targeted marketing; tax preparation; tax filing services; telemarketing services; telephone answering for unavailable subscribers; production of teleshopping programs / production of teleshopping programs; television advertising transcription of communications [office functions]; typing; updating of advertising material; updating and maintenance of data in computer databases; updating and maintenance of information in registries; rental of vending machines; website traffic optimization / website traffic optimization. See, if they just have different spelling, but in order to make sure that everyone can find it, they have both. Web indexing for commercial or advertising purposes; wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; word processing; writing of publicity texts; writing of curriculum vitae for others / writing of resumes for others. Whoa!
That is the alphabetical list for Class 35. You can tell, it covers a lot of ground and many many many businesses out there have their brands registered in Class 35. Other businesses that helped those other businesses grow, whether its advertising, SEO, you know all the PR stuff, the targeting, that's Class 35 as well, and consultancy. Again, it goes back to, are you helping them grow? are you helping them figure out the structure? are you helping them figure out some general organizational matters? that will be Class 35.
Now, I hope this is useful. I really want you to comment and let me know if you would like me to do a video about other classes or maybe other industries specifically for example you know we'll be doing a video about trademark for coaches, mentors, and consultants for example. We'll be doing a video that relates to software. But if you've got some ideas for specific industries that you want me to cover in terms of what classes, you would file trademark in those classes, post your comment below and we'll take care of it by shooting more videos.
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Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.