USPTO Class 042 Via Another Country

[Charac]

What if a mark is registered under international primary Class 042 -- from Canada -- while having U.S. classes listed. (territory of incorporation is Canada)

Though correspondent attorney on the Trademark application is located within the United States?

I've heard that Class 42 is global. Have also heard that trademark rights only extend only to the country registered. Which is right?

 

[jberryhill]

This question is something of an odd collision of concepts.

The international classification system, otherwise known as the "Nice Classification" system, is simply a set of 45 categories into which goods or services may be divided.

https://en.wikipedia.org/wiki/International_(Nice)_Classification_of_Goods_and_Services

International Classification of Goods and Services also known as the Nice Classification was established by the Nice Agreement (1957),is a system of classifying goods and services for the purpose of registering trademarks. It is updated every five years and its latest 11th version of the system groups products into 45 classes (classes 1-34 include goods and classes 35-45 embrace services), and allows users seeking to trademark a good or service to choose from these classes as appropriate. Since the system is recognized in numerous countries, this makes applying for trademarks internationally a more streamlined process.

US trademark registration records will include the "International Class", identifying the Nice classification of the goods or services, alongside the "US Class" which is an older US-only classification system.

It's just an agreed indexing system for trademark registrations. It has nothing to do with the geographical extent of rights conferred by a trademark registration.

Though correspondent attorney on the Trademark application is located within the United States?

Apart from individuals, who are entitled to represent themselves, companies and others who use an attorney for their US trademark application must be represented by an attorney licensed in the US:

https://www.uspto.gov/trademarks/basics/why-hire-private-trademark-attorney

Our regulations specify that only an attorney who is an active member in good standing of the bar of the highest court of any U.S. state or territory can represent you in a trademark application, registration, or TTAB proceeding at the USPTO. Non-U.S.-licensed attorneys and non-attorneys do not meet this criteria and cannot represent you in a trademark matter at the USPTO.

 

[Charac]

It's just an agreed indexing system for trademark registrations. It has nothing to do with the geographical extent of rights conferred by a trademark registration.

@jberryhill -- Thanks much for the thoughtful post.

If this happens to matter, I've done a search on Canadian Trademarks Database:
https://ised-isde.canada.ca/cipo/trademark-search/srch

...that yields nothing toward the possibility of having a completed inbound application
https://www.uspto.gov/ip-policy/international-protection/madrid-protocol


So basically, if I understand the essence of your post, in the case of USPTO registered mark through International class 042 that requires a U.S. attorney for filing (unless done be a person). Is that with:

- 042 simply only a method of normalizing classes across countries while not extending rights to other countries

Bottom line my question then boils down to;

Does a USPTO live registered word mark (Canada based company) have protection for use within the United States?

Answer must be yes, right? (they could have filed only a Canadian Trademark)

Just trying to avoid a harder collision!

 

[jberryhill]

Usually, the territoriality issue is pretty much irrelevant to concerns relating to a domain name. It can be tangentially interesting depending on the likelihood that a person has heard of the mark.

If you are in, say, Canada, then for the purposes of a UDRP or a cybersquatting complaint, we are going to look at things like where is your registrar, where is the site hosted, what is the reputation of the mark generally, what are you doing with the domain name, what kind of a mark is it (descriptive, suggestive, arbitrary, fanciful, surname, etc.).

So, the larger question is whether your questions are relevant to whatever your overall situation might be.

If there is some specific situation of concern to you, and assuming you are engaged in a money-making venture of some kind (or intend to), then it may be worth a brief consultation with a qualified professional.

 

[Charac]

Facts about the word mark itself:

Registrant is not using a tld in the name of the mark. Their mark applies to a service within. They don't provide notice with circle R though I see this isn't required now (previously thought it was).

Outside of this: an exact word mark .com is registered apparently by someone else that currently is not in use.

My domain name registered, also not in use, as compared beside the registerd mark; is incidentally composed of a reordering of same words, whose active verbs express a different tense and focus in meaning.

 

[jberryhill]

My domain name registered, also not in use, as compared beside the registerd mark; is incidentally composed of a reordering of same words, whose active verbs express a different tense and focus in meaning.

Yeah, okay, so lemme ask you this. If I have a pain in a part of my body, then what disease might I have?

To be more specific, its a part of my body with a bone in it.

Not really helpful.

042 simply only a method of normalizing classes across countries while not extending rights to other countries

Correct.

The classification system allow us to have trademarks like:

DELTA - for a line of faucets you can find at Home Depot:

DELTA - for a line of power tools you can find in a different aisle of Home Depot, and made by an entirely different company:

And, if you don't have a Home Depot near you, then you can get on....

DELTA - for an airline you can use to fly somewhere that has a Home Depot:

While you are at it, maybe you should make sure your teeth are okay with...

DELTA - the large dental insurance and service company:

The international classification system is simply like whatever system is used to organize books at your library. It is an agreed upon indexing system that provides a sort of general - but not always reliable - guide as to what marks might conflict and what marks might concurrently exist in different markets.

What I like about all the "DELTA" marks - and there are a LOT more, is that they also use a triangular logo of some kind, evocative of the Greek letter.