This article is intended to guide you for a “standard” trademark registration, to make a relevant choice of classes.
In this article, we will discuss registering a trademark for a mobile application.
As a first step, you should make sure that the trademark you want to register is available. This can be done in the framework for a search for prior trademark.
Once this is done, it is time to choose the products and services to be covered by the trademark.
THE INPI and The EUIPO offer standard choices of products and services, based on the Nice classification. This list is long and can be complex.
What are the classes to choose for a mobile application trademark?
Class 9 covers software that is manufactured in-house by the company. The simplified list is as follows:
- “Scientific devices and instruments; nautical devices and instruments; geodetic devices and instruments; photographic devices and instruments; photographic devices and instruments; optical devices and instruments; weighing devices and instruments; measuring instruments and instruments; signaling devices and instruments; signaling devices and instruments; apparatus and instruments for verification (control); apparatus and instruments for verification (control); apparatus and instruments for verifying (controlling); apparatus and instruments for teaching; apparatus for recording sound; apparatus for transmitting sound; apparatus for reproducing sound; image recording devices; image transmission devices; image reproduction devices; image reproduction devices; digital recording devices; digital recording media; mechanisms for prepaid devices; cash registers; calculating machines; data processing equipment; computers; electronic tablets; smartphones; e-readers; electronic readers; electronic readers; electronic readers; electronic readers; electronic readers; electronic readers; electronic readers; electronic readers; electronic readers; electronic readers; electronic readers; electronic readers; electronic readers; game software; e-readers; game software; software (recorded programs); software (recorded programs); computer peripherals (recorded programs); computer peripherals; detectors; electrical wires; electrical relays; diving suits; diving gloves; e-readers; e-readers; e-readers; game software; e-readers; game software; e-readers; game software; software (recorded programs); software (recorded programs); computer peripherals (recorded programs) protective clothing against accidents, radiation and fire; personal protective devices against accidents; fire extinguishers; fire extinguishers; glasses (optics); 3D glasses; virtual reality headsets; eyeglass cases; memory cards or microprocessors; memory cards or microprocessors; memory cards or microprocessor cards; bags designed for laptop computers; bags designed for laptop computers; smart watches; smart watches; electric batteries; batteries for electronic cigarettes; charging stations for electric vehicles; diagnostic devices not for medical use.”
This list is very generic and can be limited in the following way:
- “Game software; software (registered programs)”
It might be useful to add this as well:
- software for phones (recorded programs); software for tablets (recorded programs); mobile applications”
It is possible to specify the purpose of the software produced and marketed.
These lists are provided generically and can be customized if your products are specific or different from the simplified list. It is generally relevant to be specific in order to cover the products actually operated under the trademark. In some cases, and in particular in the event of a nullity action, you may in fact be asked to provide proof of use of all the products covered by the trademark.
What are the classes to choose for software services?
Depending on the type of mobile application, other classes may also be relevant:
- Class 38 (telecommunications): “Telecommunications; telecommunications information; communications by computer terminals; communications by optical fiber networks; communications by optical fiber networks; radio communications; telephone communications; mobile radiotelephony; provision of user access to global computer networks; provision of online forums; provision of online forums; provision of access to databases; provision of access to databases; provision of access to databases; electronic display services (telecommunications); electronic display services (telecommunications); telecommunications connection to a global computer network; news agencies; agencies of information (news); rental of telecommunications equipment; radio programs; television programs; teleconference services; videoconference services; electronic messaging services; rental of time to access global computer networks”
- Class 41 (online training and publications): “Education; training; entertainment; sports and cultural activities; entertainment information; entertainment information; educational information; educational information; professional retraining; provision of leisure facilities; publication of books; lending of books; provision of films, not downloadable, through video-on-demand services; video on demand services; production of motion pictures; production of motion pictures; production of motion pictures; production of motion pictures; production of motion pictures; production of motion pictures; production of motion pictures; production of motion pictures; rental of television sets; rental of scenery for shows; photography services; organization of competitions (education or entertainment); organization and conduct of symposiums; organization and conduct of conferences; organization and conduct of conferences; organization and conduct of congresses; organization of exhibitions for cultural or educational purposes; reservation of tickets for shows; gaming services offered online from a computer network; gambling services; gambling services; electronic publication of books and periodicals online”
- Class 42: “Technical evaluations concerning design (engineering work); scientific research; technical research; technical research; computer design for third parties; computer development; software design; software development; research and development of new products for third parties; conducting technical project studies; architecture; architecture; interior design; interior design; interior design; software development; software development (design); software development (design); software development (design); software installation; software maintenance; software update; software rental; software rental; programming for computers; computer systems analysis; computer system design; computer hardware design and development consulting services; computer hardware design and development services; document scanning; software as a service (SaaS); cloud computing; information technology consulting; server hosting; motor vehicle inspection; motor vehicle inspection; motor vehicle inspection; motor vehicle inspection; graphic design services; graphic art design services; graphic art design services; graphic design services; graphic art design services; fashion design services (industrial aesthetics); art authentication; energy audits; electronic data storage.
- Class 45 (social networks): “online social networking services”
Once again, it will be necessary to choose the relevant services, but also to personalize them so that they are adapted to your activities.
The elements provided are food for thought, which do not, however, replace personalized advice, specific to the trademark under consideration.
Do not hesitate to contact me if you need assistance registering your trademark.
