Unlike many other trademark offices, the US trademark office does not permit the use of class headings to identify the goods or services in a registration. A common filing strategy for applicants (particularly foreign applicants and other applicants that rely on foreign registrations as the basis for registration in the US) is to include the class headings in an initial application, with the intention of later narrowing the scope of the goods or services at a later time. In a recent decision (In re Fiat Group Marketing & Corporate Communications S.p.A.), the PTO clarified that class headings “are by their nature comprised of intentionally broad terms, but do not necessarily cover all goods or services within that class.”
In Fiat, the Board affirmed a refusal to register the mark FIAT 500 for “retail store services and on-line retail store services featuring a wide variety of consumer goods of others,” in International Class 35, on the ground that the proposed wording exceeded the scope of the original recitation of services (“advertising services; business management; business administration; office functions”).
An applicant that is interested in filing a trademark application for a broad range of goods and/or services should consider specifying its goods or services in common commercial terms. Applicants can continue to rely on class headings to determine the proper classification of goods and services, but should not necessarily use the headings for purposes of identifying a category of goods and/or services in a trademark application.