A Coordinated Effort: How to use the USPTO’s Coordinated Classes to perform better knock out searches

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This article was updated on December 1, 2023 to reflect the new USPTO search system.

One topic that drew a lot of attention at Alt Legal Connect 2020 was coordinated classes, primarily because it was something most hadn’t heard of before! The topic came up during the session “A Thorough Examination: An Interview with a Recent Trademark Examiner,” where Dorna Mohaghegh of Frankfurt Kurnit Klein & Selz interviewed former USPTO trademark examiner Courtney Alvarez. Courtney answered questions about trademark examination procedure and provided helpful tips and tricks to help ensure successful trademark registration. Learn more about the session here and access a recording here.

An important part of the session was when the presenters discussed how to conduct advanced searches on the USPTO site. Courtney suggested searching within coordinated classes to help narrow down search results. This quick guide will provide you with the information you need to know regarding coordinated classes.

What is a coordinated class?

For each international classification, the USPTO has created a grouping of other related classes, called “coordinated classes.” These groupings help in trademark searching on the USPTO trademark search system where certain goods and services from different classes are closely related. Coordinated classes are particularly relevant when conducting knockout searches where the attorney is looking for conflict with marks in a particular class or in related classes. For example, if a client makes and develops children’s toys and seeks to file an application in Class 28, you would not only search for similar marks in Class 28, but also in closely-related classes because many toy companies also offer items like coloring books or literary works (Class 16), costumes and clothing (Class 25), and retail store services (Class 35). It’s key to remember that goods can be related to other goods OR to services, and vice versa, so you need to think about what a consumer would consider to be a related good or service to what you are searching.

How do I search for coordinated classes?

The USPTO has made it relatively easy to search for marks in coordinated classes. When using the new USPTO search system, after performing an expert search, you have the option of filtering by coordinated classes. Use the “Coordinated classes” toggle. When you check the classes you want to filter by, the coordinated classes will automatically be checked in a lighter color.

When you filted by coordingated classes, the USPTO search system will return results that fall within the USPTO’s pre-determined coordinated classes. For example, if you enter as your search term “025,” the USPTO search system will return all marks used on goods in international class 25 or any coordinated class, which the USPTO designates as:

014: Jewelry

018: Leather goods

024: Fabrics

035: Advertising and business services

042: Computer, scientific, and legal services

A: Goods certification marks

B: Services certification marks

200: Collective membership marks

Why do coordinated classes matter?

It is important to ensure that there are no conflicts between your client’s proposed mark and other marks in the same or related classes because either an examining attorney or trademark owner can raise a likelihood of confusion claim pursuant to §2(d). Should this occur, you will need to show that there is no likelihood of confusion and that the buying public is unlikely to confuse the source of your client’s goods or services with another due to similarity of the marks. Likelihood of confusion is assessed under the DuPont factors, which specifically list “the similarities between the goods or services in association with the marks” as a reason for likelihood of confusion. Note that DuPont does not require that the classes be the same; rather, the goods or services must be similar for there to be a likelihood of confusion. This is why it is critical to search not only in the class in which your client seeks to file, but in coordinated classes as well.

What should I look out for when searching coordinated classes?

Coordinating classes can sometimes raise false alarms due to the fact that classes often encompass a variety of goods and services that are not necessarily related. For example, class 9 covers a wide range of goods including eyewear and computers, so you will need to carefully cull through the search results to determine if in fact the results from a coordinated class search are relevant.

Also, be careful: coordinated classes will provide many related (and unrelated) results, but it is not a perfect search tool. There may be instances where there are goods and services related to your client’s proposed mark that do not fall into the USPTO’s designated coordinated classes. In that case, you’ll need to conduct a separate search of the additional classes.

Where can I find a list of the USPTO’s coordinated classes?

The USPTO’s list of coordinated classes is available on its website here (click on “How classification can help you.” Go to the section header “Coordinated Classes,” and click on “see coordinated classes.” For your convenience, we’ve recreated the list of coordinated classes as a table below:

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