Can I Register the Same Trademark in Different Classes?

Trademark Class Registration

Any trademark can be registered with any amount of trademark classes. The main caveat here is that whichever trademark classes you file your mark under must be provably used in commerce prior to approval by the United States Patent and Trademark Office (USPTO). Additionally, you must pay for each class individually.

Each trademark class refers to the “category” of item that you want to sell in connection to your trademark. There are 45 classes total: 34 for goods, 11 for services. For example, Class 3 is Cosmetics & Cleaning Products, Class 12 is Vehicles, and Class 29 is Meats & Processed Foods. Whatever your business wants protected in relation to the registered trademark must be included in your application or in a future application.

(Notably, this is only if you are federally registering your trademark. Common law trademarks are unregistered and state-registered trademarks have different requirements.)

Many businesses choose to file in multiple classes because the goods and/or services they offer are in separate categories. For example, if you manufacture cheeses and wines under your trademark, you’ll likely want to register with both Class 29: Meats & Processed Foods and Class 33: Wines & Spirits. If you sell these goods in a retail setting, you may also want to register in Class 35, which includes retail services.

How To Register In Multiple Classes

When registering a federal trademark, you file an application with the USPTO. This application can be done by yourself, but many people choose to hire a trademark attorney to review and file their application.

Registering a trademark typically requires you to:

• Determine your trademark classes
• Conduct a trademark clearance search
• Choose a filing basis (usually intent-to-use or use in commerce)
• Choose an application type
• Complete and submit your application
• Respond to office actions if needed

To register with multiple classes, there are two options.

• Multi-class trademark application
• New applications filed separately

Both options require the same filing fees. The big difference here is that filing for all your classes in the same application could potentially delay registration for everything if there’s an issue or hold related to one of the classes.

Multi-Class Trademark Application

To file a multi-class trademark application, you go about the process as normal, additionally taking into account each class during each applicable step. You only need to file one trademark application with the USPTO, regardless of how many classes you’re filing with.

Because trademarks must be unique within an industry, it is important to do a trademark clearance search for each good and service you’d like to register with. For example, Dove is a brand name and trademark for (at least) two separate companies. One Dove sells chocolate and is trademarked under Class 30: Staple Foods, among others. Another Dove sells body wash and is trademarked under Class 3: Cosmetics & Cleaning Products, among others.

Importantly, each trademark class comes with an extra fee. If you file with the TEAS Plus application, it is $250 per class and the good/services descriptions will be pre-written. If you file with the TEAS Standard application, it is $350 per class, but you can write your own descriptions.

Dividing a Trademark Application

Dividing a multi-class application preserves the filing date for all the goods/services covered by the application while separating the goods/services from each other upon review. Particularly useful if one of your goods/services is being used in commerce and another is still intent-to-use. It costs an additional $100 per new application to divide your original application.

New Trademark Application

You will need to file a new application if you’re registering a new trademark completely, or you want to add on a class after you’ve already submitted your original application. You cannot amend an in-progress or approved application to include a new class.

The upside to filing a new trademark application for each class is that it lets all of your applications move at their own pace without slowing each other down.

The downside to filing a new trademark application for each class is that the federal trademark approval process can take upwards of 18 months per application. If you submit different applications at different times, you’ll have to wade through this lengthy process more than once. And if you’re using a trademark attorney, you’ll likely have to pay additional fees to have them review several applications.

With our Trademark Service, we can help you file in as many classes as you need.

Real World Trademark Class Registration

Trademark registration can be tricky enough when it’s only one class—but the complications can seem astronomical when you’re registering in two or more classes. However, no matter how complicated, registering in multiple classes is best practice in many situations.

In fact, many businesses choose to file their trademark under several classes, both at the beginning and as their brand expands.

A Look at Glossier® Trademark Registration

Let’s take a deep dive into one cosmetics brand’s journey to trademark domination by examining their federal registrations.

Glossier started out as a beauty website to encourage users to review products, and it has since become a dominant name in the clean beauty industry. Its first federal trademark of its name was filed in 2014 under Class 03: Cosmetics & Cleaning Products.

Within a few years, the company was ready to expand. With a devoted fan base of cosmetics users, what could be better than having a hat, sweatshirt, or tote to promote the beloved line? But since Class 03 is limited in scope, the trademark used on clothes would not have federal trademark protection. So in April 2016, the same trademark, Glossier, was registered under Class 25: Clothing.

The next time the company trademarked their name specifically, it was July 17, 2019. The word “Glossier” was filed for USPTO registration in four classes:

1. Class 35: Advertising & Business, specifically in connection to “retail store services and online retail store services in the fields of cosmetics and body care and skin care preparations, clothing and accessories.”
2. Class 21: Housewares & Glass, specifically “Plastic water bottles sold empty.”
3. Class 18: Leather Goods, specifically “Shoulder bags, cosmetic bags sold empty, tote bags, travel bags, duffel bags, cosmetic and personal grooming bags, namely, cosmetic cases sold empty; personal item bags, namely, pouches for holding make-up, keys and other personal items; overnight bags,” and “Clutches; purses”
4. Class 14: Jewelry, specifically “Key chains.”

Though these are far from the only times the word “Glossier” was submitted to the USPTO, it demonstrates how a business can have a snowball effect when registering trademarks.

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