Record Label Trademark: What's the Proper Class?

Dear Rich: I am trying to trademark my record label name, but am stuck on which class of goods best describes what I want to sell as a label. I plan on selling vinyl records and digital downloads. Which goods class would be most appropriate?
International Class 009 (IC 009 - Electrical and Scientific Apparatus) is your best choice if you are applying to federally register your record label trademark. Your goods and services (G&S) would be, "musical sound recordings." A trademark examiner -- the government lawyer who examines your application -- may require a more descriptive listing of goods and may even suggest certain goods, for example, "pre-recorded phonograph records, and downloadable music sound recordings."

Teach a man to fish dept. There a few ways to determine the proper class. One method is to search the ID Manual at the USPTO website. Type in your goods or services -- for example "recordings"-- and the search will uncover the relevant classes. Alternatively, when you apply online for a federal trademark using the TEAS system, you will be offered the chance to search for your class (and copy and paste the information into your application). Finally, you can either find (or confirm) the right class by searching the trademark database for other companies that sell similar products.  For example, we chose Basic Word Mark Searchand searched first for "Polygram" and then, "CBS Records." The registrations appeared and confirm Class IC 009. Note, record labels that also offer recording studio services may want to add a second class (IC 041 - Education and Entertainment Services).

Can Festival Domain Name Stop Similar Name?

Rasta Hat

Dear Rich, I decided to create a brand and annual music festival called The Houston Reggae Festival. I registered the domain HoustonReggaeFestival.com, I created social media handles on every major platform, and I've paid for business cards, Facebook advertising, custom brand merchandise like stickers, T-shirts, etc. I registered my domain in May 2015, and I've been publishing content and promoting my event ever since. I own my own small business and listed the festival as a production of my business. I recently discovered another festival infringing on my name, but I've only trademarked under common law so far. I was wondering if I should send a friendly message asking the other events producers to respect my mark for the Houston Reggae Festival, send a cease and desist letter citing my common law trademark/servicemark, or send in my mark application first and send a cease and desist under a pending mark? I'm a little worried my mark might be too generic, but I've listed Houston and Reggae Festival as disclaimers on my application so far. I was also curious what would be the best three services to list for my services as a reggae festival and brand for my SM application?
As you can imagine, legal disputes over festival names are not uncommon (even when the festivals offer different services). But to stop someone from using a similar festival title, you need more than a domain name; you need trademark rights. You receive those rights by being the first to use the name in commerce. In other words, if you used Houston Reggae Festival in commerce starting in May 2015, you might have superior rights (referred to as "priority") over subsequent users.
What is "use in commerce?"Your mark is "in use in commerce" when the services are actually advertised, and you can legitimately deliver festival services to customers. Actual use must be a commercial use, not simply a token use to obtain trademark priority. So, if you promote a festival but you cannot provide festival entertainment, your mark is not in use.
Should you apply for federal registration? We believe Houston Reggae Festival is registrable. You will need to disclaim "Reggae Festival" (but not Houston), and you should register in Class 041. That's based on two existing trademark registrations: Kentucky Reggae Festival (Reg. No. 2292636) and Charlemont Reggae Festival (Reg. No. 88104947).
Registration complications. Although the mark is not generic, a USPTO trademark examiner will likely object to it as being "descriptive." To overcome this and achieve registration, you will need to demonstrate that your mark has become distinctive for reggae festivals. You prove this by demonstrating substantial marketing and advertising, or by five years of continuous use. If the examiner classifies your mark as descriptive and you can't prove distinctiveness, you may need to switch your application to the Supplemental Register. Also, you cannot file an ITU application for a descriptive mark.
What should you do? There are too many variables in play -- your date of first use, whether the mark is descriptive, whether you have the financial support needed to take on a trademark dispute -- that we cannot plot your next move. Surely, if you're hosting or planning to host music festivals, you should resolve your name dispute, and apply for trademark registration. As to the order of events, you'd be best served by consulting an attorney. Consider contacting Texas Accountants and Lawyers for the Arts.

Does TM Registration Provide Priority for All Items Within the Class?

Dear Rich: Does a trademark registration grant the right to use a trademark only for the specific goods  or for any/all goods within the category? For example, does a registration in Class 9 for an app give the trademark owner exclusive rights for everything in Class 9? No, registration in a  trademark class doesn't guarantee exclusive rights for all the goods and services in that class. For example, we counted over a dozen different companies who had registered the mark "EAGLE" in Class 9 for products ranging from fatigue monitoring devices to business software for inventory management. The principal issue for a trademark examiner is whether consumers are likely to be confused between the two similar marks. As the USPTO advises examiners, "[I]f the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely."

What Trademark Class for Therapy Doll?

Dear Rich: Under which trademark class would a doll used for therapy (psychological) and available for any consumer to buy online, fall? The USPTO categorizes dolls used for therapy purposes in the "Medical Supplies" category, Class 10 -- for example, "role playing dolls for use in psychological testing and therapy." (As you may know, typically a doll as used by a child would fall within the "Games and Sporting Goods" category, Class 28.) Here's  more on the USPTO classification system. BTW, the manner in which you sell the doll -- in retail stores or online -- won't make a difference for purposes of determining trademark classification.

Wants to Expand Trademark to Other Classes

photo USDA
Agricultural Research Service

Dear Rich: We are a small organic farm near Salem, Oregon. We have an existing 1(a) trademark with an International class 001 and several U.S. classes for the products we manufacture and distribute. I would like to add three additional U.S. classes. I can’t seem to get a handle on exactly which form to use. Seems straight forward if the trademark has NOT been published and still under review but I can’t find the answer to post publication addition of classes. If your trademark application has been published for opposition (see Step 11), and you want to add additional classes, you should file a second application. It won't make any difference financially as you will be charged the same per class (approximately $300 each) however you file. You can even file three separate applications if, for example, you anticipate problems with one of the classes but not with the other two.

Examiner Objects to Facebook Game Trademark

Dear Rich: I need to register a trademark, which is the title of a videogame that runs on the Facebook platform. The filing was made under IC041 (Entertainment services, namely, providing on-line computer games), but when I sent over a specimen (screenshots of the game featuring the title) I was told that such a game does not constitute a "service", but rather it constitutes "goods" (video game software), thus I should better restart the filing process under IC009 (Computer game software for use on mobile and cellular phones). Am I facing a hardball attorney or are the USPTO guys right and I should restart the process? We agree with the examiner. You would use Class 009 for registering the name for a game. (You would use 041 if you were registering a website that provides the game-related services, or if you were registering the name of the company that makes the game.) The best way to avoid problems in the future is to look up similar goods and see what classes were used for those marks (or check out our book for app developers). Use the basic Trademark Search and type in the name of a video game to see its classes. For example, scroll down to see the classes sought by the Angry Birds folks.
More places to search. To identify the class for your goods, you can also search the USPTO’s Acceptable Identification of Goods and Services Manual. From the Choose Field drop-down list, pick Class, and then type in a description – for example “video game”—into the Enter Search Terms field. The search results will tell you which class is recommended. Another way to figure out which class your product falls into is to check the Trademark Manual of Examining Procedure (TMEP).