Describing the goods and services associated with a trademark is a crucial step in submitting a complete trademark application. The United States Patent and Trademark Office (USPTO) will use the description provided in an application to determine if a trademark meets the minimum requirements for registration. Additionally, the USPTO will use the goods and services listed in an application to see if a trademark is confusingly similar to one that is already registered. One way to avoid unnecessary delays in the processing of your trademark application is to provide an accurate description of the goods and services to be supplied under the trademark. Keep the following 3 points in mind when submitting a trademark application:
Classification of Goods and Services
The USPTO, along with 84 other countries, uses the International Trademark Classification of Goods and Services, established by the World Intellectual Property Organization (WIPO), as its primary classification system for goods and services in trademark applications. This classification system provides a uniform method of categorizing goods and services, which makes it easier for applicants to register their trademarks internationally. Some applicants have trademarks that identify goods and services that span multiple classes within one application. For example, a wine vineyard may want to sell wine, and wine decanters. These goods would span two separate classes, namely, International Class 33 for wine, and International Class 21 for wine decanters, and would require a filing fee for each class.
Selecting The Right Goods and Services
Deciding how to describe goods or services can be a dubious task. On the one hand, you want to describe your goods and services narrowly to provide as much specificity as possible, and on the other, you want to be broad enough to provide wide protection for your trademark. Finding the middle ground is key to obtain robust protection that accurately reflects your business model.
Common Trademark Mistakes
Many of the mistakes made when describing goods and services could be easily avoided with a proper understanding of the trademark application process. This is why it is important to consult an experienced trademark attorney when looking to register your trademark. Here are some common mistakes made by applicants when describing their goods and services:
Using Overly Technical Language
The language used to describe goods and services should be clear and include commonly used commercial terms. Using highly technical or industry specific terms can result in an overly narrow description causing a delay in the processing of an application.
Including Other Trademarks in a Description
Many products are designed as accessories for other products. Examples of these would be camera lenses, phone cases and screen protectors for mobile phones. If your product is an accessory for a third party product, avoid listing the name of the third party product in your trademark application.
Including Goods or Services Not Sold to the Public
A trademark application should never reference goods or services not offered to the public
Proper Punctuation Matters
Different punctuation marks have different meanings. The use of a semicolon in the goods & services description signifies a distinct category of goods and services. The use of a comma indicates an elaboration within a given category of goods and services. Situations like this demonstrate the value in seeking help with a trademark application from an experienced trademark lawyer.
Hawkins Law Offices, LLC is an intellectual property law firm specializing in the protection, maintenance, and monetization of its client's trademarks. We are dedicated to representing creators in all forms. If you have any questions regarding this article or would like to speak with an experienced trademark attorney, please do not hesitate to contact us.