By Jeremy Green Eche

When you file a trademark application, you have to file for specific goods or services within one or more of the 45 trademark classes. A software trademark can fall under class 9 or class 42, depending on what type of software it is. Many trademark applicants file for software in the wrong class. This mistake is very easy to make. 

In this guide, I’ll go over the differences between the two main trademark classes for software and how to choose the right one. I’ll then give examples of specimens and allegations-of-use using two hypothetical examples: a downloadable app and a web-based SaaS product.

In summary:

Unfortunately, if you get this wrong, your USPTO examining attorney almost definitely won’t let you correct it. This is very similar to picking goods/services for a musician, but harder to fix if you screw it up.

Sometimes people fall into this trap because they see a versatile-seeming goods/services ID in one class and believe it applies to their product. Perhaps you have a downloadable mobile spreadsheet app that has a subscription model, so you think it should count as “Software-As-A-Service (SaaS) for spreadsheet management” in Class 42. The USPTO, unfortunately, would not consider that app to fall under Class 42, unless you also have a browser-based version available that people can operate on the web without downloading it. 

Class 42 is the only class that has SaaS as an option, even though SaaS sometimes comes in downloadable form. If you believe your product is SaaS, but it only comes in downloadable or recorded form, then you should file in class 9 and avoid mentioning the SaaS aspect of your software.

Or maybe you have a web-based accounting software application that runs in a Java applet, so you believe “Computer software for accounting” in Class 9 is a good way to cover your product while keeping your protection broad. This won’t work either. No matter what wording is used, your specimen will be rejected if the specimen doesn’t indicate that you offer a downloadable software application, one that is not web-based.

Can this error be fixed? Again, USPTO examiners almost never let you amend the goods/services from one class to the other to rectify this issue. Here are a few things you can try though:

If you accidentally filed for downloadable software in Class 9, build a bare-bones mobile app and release it on a mobile app store, or make a downloadable PC executable file and put a link to it on your website. Then take a screenshot of the app store listing for your software, or of the download page on your website. As long as the screenshot contains the mark, a blurb describing the software, and a clear download link, it should be accepted by the USPTO. It’s fine if the software isn’t good yet, as long as it performs the function you listed on your trademark application.

Similarly, you could build a beta version of the software you accidentally applied for. Just build a downloadable software application to supplement your existing web-based software. Then you can submit a statement of use with a specimen from your new downloadable software. The specimen would be a screenshot of the software itself, and one screenshot should include the mark you applied for. As long as you’ve sent this beta out to testers, there’s a good argument to be made that the trademark has been used in commerce for the software.

If you accidentally filed for non-downloadable software, put up some kind of web application on your website that performs a minimal version of one of the services your main software application provides, with a user login system. You can then take a screenshot of a page on your website that contains the mark, a blurb describing the software, and a login function.

I’ve also seen applicants try the following, which I don’t recommend: If you have non-downloadable software, but it looks like similar to downloadable software, you might try taking a screenshot of your software with the web browser toolbars cropped out, and describing the specimen as “Screenshot of Owner’s software application.” This is a desperation move though, and should be avoided. Your specimen may be rejected, first of all. But if you do manage to reach registration, your trademark will be very vulnerable to challenge. If anybody has reason to try to cancel your trademark registration, they might cite your fraudulent specimen as evidence that your trademark registration is invalid.

I’m going to show you exactly what my trademark specimens and my USPTO forms would look like if I were filing trademark applications for two famous software brands. We’ll file an application for the hit computer game Among Us in class 9 and we’ll file an application for the web-based version of Stripe, the popular payment processing software, in class 42. 

We’re filing for the downloadable version of the game Among Us in class 9. I’m giving you two different specimen examples, but either one would probably work on its own. 

The first specimen is an in-game screenshot of the software’s title screen. This is a good way to show use of downloadable software in commerce because it clearly shows the mark in connection with downloadable game software. I took this screenshot on my phone and uploaded it to my computer. 

Sometimes a title screen doesn’t include enough context about what the software does, in which case you should also take a screenshot of the software’s everyday use case as well, and submit both screenshots together as a specimen. Or if the software displays the trademark when you’re actually using it, that’s even better. 

For example, if you have spreadsheet software that displays the name of the software in the upper right corner at all times, you can take a screenshot of the app in its normal spreadsheet viewing mode. The Among Us title screen works well as a specimen because it includes menu options saying “How to Play” and “Freeplay”, making it clear that this is game software, so a second screenshot of the game isn’t needed.

In-app specimens won’t work if the software never displays the brand name anywhere within the app, which I’ve found to be a surprisingly common situation. I often open a client’s app and find that the full title of the app isn’t used anywhere on the app; they only use abbreviated logos or shorter variations of the name. For example, a client may have me file a trademark application for FASTCHEAP RIDESHARE, only for me to open the app and find that the app itself only uses the shortened title FASTCHEAP, or only displays a logo that says FCR. In this situation, I have to use the second type of specimen described below.

The second specimen is also a screenshot I took on my phone, but rather than being a screenshot of the software application itself, it’s a screenshot of the App Store listing for the software application. 

This is a great specimen for downloadable software because it shows the name of the app, a brief description of what it is, and a download/purchase link for the software. If you already own the app on your device, then instead of a purchase link, it will say “update” or “play,” both of which should also count as use of the mark in commerce because one is still a type download link and the other is a link to use the product.

The App Store listing is my default specimen for software products in class 9 because it’s usually easier for me to obtain than an in-app screenshot. If the software is only downloadable on the web, then a screenshot of the download or purchase page for the software will work as well. 

The only times I can’t use this type of specimen are when my client’s app is only available in on an operating system I don’t have (e.g. the Google Play Store for Android devices), or when the client’s software has no direct purchase or download link. The latter situation is common for enterprise software where the vendor customizes and/or installs the software for their customer. 

Occasionally the USPTO might give you pushback if you provide a screenshot of the software’s purchase page on their website, because this technically doesn’t show that the software is downloadable and belongs in class 9. If this happens, you can respond by sending an in-app screenshot specimen instead.

This screenshot shows the specimen portion of a TEAS trademark application, but this portion of the form is nearly identical to the statement of use and allegation of use forms. The allegation of use is simply being made as part of the initial application rather than later in the process. It should serve as a good model for you no matter what stage of the application process you’re in when you submit a specimen showing use in commerce for your trademark. 

The first thing this screenshot shows are sample goods/services IDs for downloadable software. Usually you want to pick a very broad identification that allows you to fill in the blank with the function of your software. My go-to ID is “Downloadable computer software for {function of software}.” You may want to supplement that ID with a second ID that mentions mobile devices like “Downloadable computer application software for mobile phones, namely, software for {function of software}.” Occasionally I’ll use a less broad ID like the “game software” one I used above, if it makes sense for that particular type of software. 

Where I wrote “function of software”, the USPTO allows you to write a description of your software’s function, e.g. “image file compression” or “sharing of music playlists.”

If your software comes pre-loaded on a device, like the firmware that comes included on a Peloton stationery bike, or the medical imaging software that comes pre-loaded on an MRI machine, then you should also include an identification for recorded software, e.g. “Recorded software for {function of software}.”

Then there’s the attachment of the specimen. Your specimen screenshot should be a JPG file, and that’s really the only requirement. There’s no real file size requirement.

In the “Description of Specimen” box, you essentially just describe what the picture is of, and why the picture is important. In this case, I wrote two sentences because I included two separate specimens, but I would have been fine with one specimen and one sentence. Because these specimens were not on a website, I left the website URL and date-of-access fields blank.

For the first use date fields, I usually put the date I filed the application unless I have reason to believe that this specific client would benefit from putting an earlier date. The first-use date is an “on-or-before” date, meaning that you’re not committing to a particular first use date if you put today’s date. The real first use date could be years earlier and you’d be allowed to demonstrate this if you ever had to litigate against another company over trademark infringement. You’re not bound to the first-use date you enter on the trademark application, unless the date you listed is too early.

We’re pretend-filing in class 42 for the web-based version of one of our payment processors, Stripe. 

For Stripe, I’ve taken a screenshot of the page that lets you register as a user.

This registration page is ideal for a web-based software specimen because it includes the trademark (“Stripe”), a description of the product, and a way for consumers to access the software. 

Some software products don’t describe the product at all on their registration pages, in which case you’ll likely need to take a second screenshot of a descriptive page on the website (maybe the main page or the “features” page).

Another possible specimen for most types of web-based software is a screenshot of the web-based app itself. However, Stripe does not seem to display its brand name when you’re using its web-based software, so that wasn’t an option here.

The main difference between this allegation of use and the one I made for class 9 is that a URL and date of access are included for the webpage on which I took the screenshot. 

This isn’t because I filed in class 42 instead of class 9; it’s because this was a web specimen. A Class 9 allegation of use can include a URL and date of access as well if the specimen is a screenshot of a download link on a website.

As I explained in the class 9 sample application, I usually list the date I filed the application for the first use dates in order to avoid committing my client to a date that might be too early.

Software trademark classes and allegations of use are tricky, so I hope this guide made things a bit clearer. I have another blog post on Communer that has several more examples of trademark specimens if you’re still not sure how a specimen is supposed look. Even better, I wrote the Trademark Specimen Handbook, which you can buy on the Legal Guides page of Communer.

While choosing the correct trademark class for software is important, the most important thing is to come up with a strong brand name and have an attorney research it for you before you build your company and your tech around it.