Would narrowing down the number of trademark classes reduce the scope of brand protection?

Photo of Tomas Orsula

Written by Tomas Orsula

Senior Trademark Attorney

Simply put, yes. When you apply for a trademark, you have to list classes of goods and services under which you want to be protected. The more classes you have, the broader the scope of protection.

In practice, if someone copies your brand, classes come into play to help determine whether your protection applies. For example, if you register a trademark in Class 25 for Clothes, and someone sets up a hair salon with the same name, your protection won't apply. However, that doesn't mean you can register the trademark in all classes to be protected against everyone. The IP office will review your list of classes, compare it to your business offering and determine what you have the right to claim.

Although it can seem that narrowing down the list of classes would be unwanted, there are situations where it can happen, including:

  • Budgetary reasons. As each additional class costs extra, the business owner may choose only the classes corresponding to the business's core offering.
  • Existence of competition in the same class. To avoid or resolve opposition, the applicant can choose to drop a class if there's an existing trademark in the same class that is very similar to their mark.
  • Updating the application at renewal. In general, trademarks expire after ten years if they are not renewed. The scope of the business might change during that time, and the applicant might choose to leave out a class if the business doesn't offer the corresponding goods or services any more.
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