Retail Trademark: How to Choose Goods and Services

Trademark filing for a retail brand is one of the areas where I see the most mistakes. The confusion stems from the very nature of retail: you sell products, but the products are not yours. From a Nice Classification perspective, this distinction changes everything.

Before filing, verify your trademark’s availability — see the trademark filing guide and the article on pre-filing checks.

The Nice Classification: goods vs services

The Nice Classification distinguishes 45 classes split into two blocks. Classes 1 to 34 cover goods: tangible items you manufacture or sell under your own name. Classes 35 to 45 cover services. A shoe manufacturer files in class 25. A restaurant files in class 43. A SaaS publisher files in class 42.

The classic retailer mistake

A retailer’s natural instinct is to file in the classes corresponding to the products they sell. A clothing store picks class 25. An electronics store picks class 9. The problem: these classes protect the manufacture and sale under one’s own name. If you do not manufacture the products — if you resell third-party brands — this is the wrong approach.

I see this regularly in audits: retailers that filed in product classes when they should have targeted class 35. The risk is twofold. On one hand, the trademark does not cover the actual business activity (retail). On the other hand, it covers products the owner does not manufacture, exposing them to a revocation action for non-use.

Class 35: the right approach

Selling third-party products is legally classified as a service. Class 35 covers it, under the heading “retail services”. But simply mentioning “retail services” generically is not enough. Both INPI and EUIPO require that the list of products sold be specified.

In practice, your filing must state: “Retail services in relation to [list of products]”. For example: “Retail services in relation to clothing, footwear, bags and fashion accessories”. Or: “Retail services in relation to electronic devices, computers and IT accessories”.

This precision is essential. A filing that merely states “retail services” will be considered insufficiently precise and may be challenged.

When to combine class 35 with product classes

If your store sells both third-party products and products manufactured under your own brand (an in-house line), you need to file in both types of classes: class 35 for retail services, and the product classes corresponding to your own manufacturing.

This is common in fashion (see the article on clothing trademark classes) as well as in food or electronics. For SaaS companies, the relevant classes are different — see the article on SaaS trademark classes.

Choosing the wrong class when filing a retail trademark is a common but costly mistake — because a filing cannot be amended after submission. If you would like to file a retail trademark, book a call to define the right strategy from the start.