Should Every Business get a Trademark under 35?

This post was first published on 12th March, 2012.
Recently, an entrepreneur came to me for advice on obtaining trademark protection. The man said he runs a software development and services company and he found a competitor running a similar business in USA under a trademark that is identical to his. As a prior user, he wanted to protect his trademark but was unsure of what trademark classes he should apply under.
I advised him to file applications under Class 9 for software products and Class 42 for software services and also told him he could consider filing applications under Class 16 for stationaries and Class 35 for business services and said these classes were only optional. The man looked surprised to learn that he had to file only two applications. Apparently, he was advised by another trademark services provider that if he did not apply under class 35, any other company who registers an identical or similar mark under 35 could prevent this man from continuing with his business and strip him off his company incorporation, as class 35 concerns to business services. I had to then explain to him that a person registered under class 35 could not prevent him from running his business in relation to software and software services, and that Registrar of Companies works independent of the trademark law.
It is often that one comes across service providers advising the clients to file unnecessary applications just to make business. One should understand that a trademark has to be registered in relation to a product or service that the person deals with under the mark and not the kind of vocation he/she is into. It is not necessary for a businessman to register his mark in class 35 just because he is running a business or for a pharmaceutical company to register under class 44(medical services) because it is health care. One should register a mark only in classes to which the business or service relates to. Certain classes such as Class 16 for stationaries and class 35 for business services are advised as only optional, since, showing usage in such classes is not difficult and hence, one can protect his trademark in more classes. A registered mark, if not used with respect to goods/service for which it is registered can lose its registration and will not accord worthwhile protection.
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