Class 41 of the NICE classification is a huge class that generally covers education and entertainment.
You'll know more about this classification and what you can or cannot trademark under it in the short video below:
As you can imagine, both are huge areas that often have nothing to do with one another. This makes it challenging for everyone. Makes it challenging for brand owners who, let's say, offer courses on social media marketing and cannot be certain if their trademark will go through if some other company already has a similar brand that covers that, say filmmaking or math tutoring services. It makes it challenging for trademarking firms like mine. Because there's much subjectivity that goes into the evaluation of whether two trademarks are confusingly similar, and class 41 is probably the worst because it's not just about the actual services, but it's also the content of what the services are all about. So it makes it very hard to give reliable predictions. And finally, it makes it challenging for trademark examiners who need to make some hard judgment calls and also have to deal with unhappy parties, but it is what it is.
Usually, the outcome of whether your trademark goes through depends on a number of factors, whether the examiner even notices the other trademark in the same class 41 when they conduct their searches. If they don't. Great. Sometimes they do, and oftentimes they do. Also depends on how well the examiner knows and understands trademark law, and as much as we'd love everyone to be on the same page, it's just not what happens in real life. Some are a lot more knowledgeable than others. It also depends on how well the examiner understands what you actually do and what your services entail. Without it, they often prefer to err on the side of caution, and many are reluctant to change their original conclusion because they feel ashamed. They didn't really get it the first time around.
Now, another factor is the advocacy skills of the trademark agent or trademark attorney who is helping you with your trademark application. Or if you're not using one, if you're filing a trademark by yourself on your own advocacy skills. And finally, you depend on the side of the bed on which the examiner wakes up on the day when they make their determination. Set as it is. The fifth factor is often more consequential than the other four.
Now, the official class heading for class 41 reads as follows, education providing of training, entertainment, sporting, and cultural activities. And here's the formal explanatory note for class 41. Class 41 covers mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals as well as services intended to entertain or to engage the attention. This class includes in particular services consisting of all for some education of persons or training of animals. Services having the basic aim of the entertainment, amusement or recreation of people, presentation of works or visual arts or literature to the public for cultural or educational purposes.
And now, I'll just walk you through the full list of services that can be trademarked in class 41 and if I stumble across something that requires common knowledge, just give it to you. All right, ready? Take a deep breath.
Let's do it. Academies, education, Aikio instruction, amusement park services, providing amusement arcade services, animal training. Now again, think about it. The same brand, let's say, Rainbow and Lollipops. Let's say somebody wants to use Rainbow and Lollipops to train people in Aikido and somebody wants to build an amusement park called Rainbow and Lollipops. How close is that? And somebody wants to train lions for circus and also call it Rainbow and Lollipops.
Now is that a problem, right? See how this can become really subjective. Okay. Let's keep moving forward.
Rental of artwork, rental of audio equipment, arranging of beauty contests, boarding school education, booking of seats for shows, calligraphy services, providing casino facilities, gambling, cinema presentations, movie theater presentations, rental of cinematographic apparatus, club services (entertainment or education), coaching (training), arranging and conducting of colloquiums, arranging and conducting of concerts, arranging in conducting of conferences, arranging and conducting of congresses, correspondence courses, cultural-educational or entertainment services provided by our galleries, disc jockey services, discotheque services, dubbing, educational information, educational examination, educational services provided by schools. Now listen to this, educational examination for users to qualify to pilot drones. They have a separate line for that in the NICE convention. Oh my God.
Educational services provided by special needs assistance, electronic desktop publishing, entertainment services, entertainment nurse services, entertainment information, film production, other than advertising films. Now, film production other than advertising films. The reason they separate advertising films is that advertising belongs to class 35. We have a whole video on class 35 so here they wanted to separate films that are meant to educate or entertain from films that are designed to advertise a product or a service.
Film directing other than advertising films, film distribution, providing films, not downloadable via video-on-demand services. Now, why are they saying not downloadable? Because downloadable refers to a physical product in the view of the trademarks office. So downloadable class nine because there is a physical file, right? Because this, this goes back to, uh, CDs, DVDs, you know, uh, all sorts of, uh, physical carriers on which you could record the movie or the audio material. And they say, well, if it's downloadable, it's pretty much the same thing. So it'd belong to class nine. But here they say providing films not downloadable is because, uh, then it's a service. If you cannot take your, uh, file, or take the CD or DVD in your hands, then it's a service. Okay?
Conducting fitness classes, gambling services, game services provided online from a computer network, games equipment rental, providing golf facilities, conducting guided tours, conducting guided climbing tours, gymnastic instruction, health club services, health and fitness training, holiday camp services, entertainment, arranging and conducting of in-person educational forums, rental of indoor aquaria. Wow. What's this have to do with education or entertainment? But apparently rental of an indoor aquarium is class 41.
Judo instruction, karaoke services, know-how transfer training, language interpreter services, layout services other than for advertising purposes, lending library services, rental of lighting apparatus for theatrical sets or television studios, lightning technician services for events, microfilming, mobile library services, or book mobile services. I have no idea what book mobile services means, but apparently, it's a thing. Modeling for artists, rental of motion pictures (Hello Blockbuster), movie studio services, providing museum facilities, presentation exhibitions, music composition services, production of music, news reporter services, nightclubs services (entertainment), nursery schools, an online publication of electronic books and journals, providing online publications, not downloadable. Same idea. Downloadable would be either class nine or class 16.
Providing online music, not downloadable, providing online videos, not downloadable orchestra services, organization of competitions, education or entertainment, organization of exhibitions for cultural or educational purposes, organization of sports competitions, organization of lotteries, organization of balls, of all things, organization of shows you preserve your services, organization of fashion shows for entertainment purposes, organization of cosplay, entertainment events, party planning, entertainment, personal trainer services, fitness training, photographic reporting, photography, physical education, practical training, demonstration, presentation of circus performances, presentation of variety shows, presentation of live performances, presentation of texts, other than publicity texts, the publication of books, radio, entertainment, rental of radio and television sets. I wonder when was the last time somebody rented their radio set? We'll see.
Production of radio and television programs, recording studio services, providing recreation facilities, recreation information, religious education, Sado instruction, tea ceremony instruction, screenplay writing, scriptwriting other than for advertising purposes. So again, they separate scriptwriting for movies from copywriting, right? When you just write copy, uh, for advertising for marketing, uh, whether it's a movie or something else. So they want to be very clear that everything related to advertising is class 35. Beyond that, it's class 41.
Arranging and conducting of seminars, rental of show scenery, production of shows, sign language interpretation, rental of skin diving, equipment. Skin diving equipment. No idea what it is. Songwriting, rental of sound recordings, sound engineering services for events, sport camp services, providing sports facilities, rental of sports equipment except for vehicles. Because rental vehicles are a different class. Rental of sports grounds, rental stadium facilities, rental of stage scenery, subtitling, arranging and conducting of symposiums, teaching educational services, instruction services, television, entertainment, providing television programs, not downloadable via video-on-demand services, providing television programs, not downloadable via video-on-demand services, rental of tennis courts, theatre productions, ticket agency services (entertainment), the timing of sports events. So timing is separate from conducting the actual event and they, they're both in class 41.
Toy rental training services provided via simulators, translation. See, translation really is neither education nor entertainment, but they had to put it somewhere and they chose to put it in class 41. Tutoring, rental of video/cassette recorders, rental video cameras, rental of camcorders, video editing services for events, videotape editing, rental of videotapes, videotaping vocational guidance, education or training advice, vocational retraining, arranging and conducting of workshops (training), writing of texts and zoological garden services. As I said, it was a long list of all the services that are included in class 41 of the NICE trademark classification.
I hope this is useful to you. Uh, I hope that my comments provided some clarity. And if you've got a brand, if you are offering educational or entertainment services, if you got a brand that you want to protect, go to trademarkfactory.com and book your call with our strategy advisors. They'll help you get the process started. And if you're just here to learn, if you want to hear more about building a brand, about protecting your brand, about trademarking your brand, make sure you subscribe to get notified whenever the next video goes live, and I'll see you in the next video.
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.