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Grip socks, tanks and tote bags: does your studio need Class 25 to sell merch?

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If you sell the merch, a Class 41 registration for your classes doesn't cover it. Socks and tanks are Class 25 goods, and tote bags are Class 18, so protecting the name on those products means adding those classes. If you only hand items out to promote your classes, they may not count as goods at all. And when you do file for clothing, your studio has an advantage most apparel brands don't: the name already identifies your classes.

What does your studio registration actually cover?

A registration covers what it lists. Under 15 U.S.C. § 1057(b), a registration is prima facie evidence of your exclusive right to use the mark "in commerce on or in connection with the goods or services specified in the certificate." A studio registration in Class 41 lists fitness classes, instruction and similar services. It doesn't list socks.

The class schedule makes the split plain. Class 41 is "Education; providing of training; entertainment; sporting and cultural activities." Class 25 is "Clothing, footwear, headwear." Class 18 includes "luggage and carrying bags." Water bottles usually sit in Class 21, which starts with "Household or kitchen utensils and containers." Each class is another base fee of $350. I wrote about how classes work in the article on trademark classes.

Is a free tote at sign-up a product?

Not necessarily. The USPTO registers marks for "goods in trade," and the Trademark Manual of Examining Procedure (TMEP) says "Incidental items that an applicant uses in conducting its business" don't qualify. Items aren't goods in trade "unless they have utility to others as the type of product named in the trademark application."

The TMEP's examples cut both ways. Brochures that "served only to explain and advertise" a company's goods weren't goods. But ball point pens a tool company used for promotion were goods in trade, because they had a real use and were sold to dealers and moved in commerce under the mark. A calendar with its own function, regularly distributed for years, also qualified.

So the question for your studio isn't whether the item is free. It's whether the socks or the tote are a product in their own right, moving through commerce, or just a marketing piece for your classes. Grip socks you sell at the front desk and online are products. A sticker in the welcome bag probably isn't.

Why do big logos on tanks get refused?

Here is the part that surprises studio owners. A trademark application for clothing can be refused because the logo looks like decoration. The USPTO calls it an ornamental refusal: "a slogan prominently displayed on the front of a t-shirt may be considered merely ornamental use."

The TMEP tells examining attorneys to "consider the size, location, and dominance of the proposed mark." It says "A small, neat, and discrete word or design feature" can read as a trademark, while "a larger rendition of the same matter emblazoned across the front of a garment" may be seen only as decoration. Studio tanks with the name across the chest are the classic version. I went through this refusal in detail in the article on ornamental refusals, so I won't repeat it here.

What is secondary source, and why does it help a studio?

Secondary source is the route built for businesses like yours. The USPTO describes it as using your mark on a product that promotes a different, primary offering. Its own example is a university selling logo T-shirts: "Selling T-shirts is supplementary to the university's primary function of providing educational services." A studio selling logo tanks is in the same position. The classes are the primary offering. The tanks are supplementary.

To use it, "you must already have some underlying primary use of your trademark on other goods or services." The TMEP lists the ways to show it, including "ownership of a U.S. registration on the Principal Register of the same mark for other goods or services" and "non-ornamental use of the mark in commerce on other goods or services." One TMEP example involved an applicant that had already registered its name and checkered flag design for services, and the refusal for patches and clothing was reversed.

There's a timing catch. The TMEP says an intent-to-use application without an allegation of use isn't enough to show secondary source. Your Class 41 mark has to be registered, or in use with an acceptable specimen, before it can carry your Class 25 filing. That's a reason to get the studio registration done first.

What else gets you past the refusal?

The USPTO's guidance lists other paths: a substitute specimen showing the mark used as a brand, since tags and labels are normally acceptable specimens for goods; acquired distinctiveness under Section 2(f), though long use alone usually isn't enough; amending to the Supplemental Register, which carries fewer benefits; or, if the refusal rests only on the specimen, switching to an intent-to-use basis and filing a proper specimen later. For grip socks, packaging or a hang tag with the studio name on it does that job better than a photo of the sock.

What this means for your studio

Sort your merch into two piles. Products you sell, online or at the desk, are goods, and each kind sits in its own class: socks and tanks in Class 25, totes in Class 18. Items you give away only to promote classes may not be goods in trade at all.

If the products pile is real and growing, add the classes. When you file, use a tag, label or packaging as the specimen rather than a photo of the tank front. And make sure the studio's Class 41 registration is in place, so you can point to it as your primary source if the examiner calls the logo decoration. I covered how to write the product list in the article on goods and services descriptions.

If you want to talk through which merch your studio name should be registered for, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

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This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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