Should I register my trade mark first in only my main class and then later register in in all classes?

Should I register my trade mark first in only my main class and then later register in in all classes?

It is a difficult call to make on whether to register in only one or multiple classes at the outset because funds can be tight. The danger of not registering it in all classes is that if a competitor tries to register the same or a similar mark in a different class that would be confusingly similar in goods or services to the earlier-filed mark then it is generally blocked from registration.

We are often successful in getting these hard-to-register marks over the line for clients. The flip side of that coin is that unless you cover it in all of the relevant classes, someone like us might be able to lock you out of those classes you have not registered in. It all depends on how contentious and valuable the TM is. This is a business decision.

Mark Warburton About the author

The Intellectual Property Guru. His determination to protect innovation stems from a family legacy in which his grandfather, a genius inventor, had his innovations stolen and patented by someone he trusted, which led to his grandfather dying a pauper on a park bench. Mark is an international award winning lawyer and patent attorney and 3-time published author. His prowess in the court room sees him winning cases that others thought were unwinnable. Mark’s passion for protecting intellectual property shines through in his pro-bono legal mentoring, proactive legal workshops and 1-2-1 work with clients.