An accurate description of goods and services is a crucial component of a successful trademark application. The USPTO will rely on the language you use to describe your goods and services to determine if your trademark meets the minimum requirements for registration. Additionally, and more importantly, the USPTO will use your description of goods and services to determine if your mark is confusingly similar to one that is already registered. One way to avoid unnecessary delays in the processing of your application, and to increase the chance that your application will mature to registration, is to provide an accurate description of your goods and services.
The Classification System
The United States uses a classification system that separates goods and services into 45 distinct categories known as International Classes. It is very common for trademark owners to have a trademark that identifies goods and services that span multiple classes within one application. For example, a California based wine vineyard may sell wine and wine decanters. These products are placed into two separate international classes, namely, International Class 33 for wine, and International Class 21 for wine decanters, and would require a separate filing fee for each class.
Common Trademark Mistakes
You can avoid many mistakes involving the description of goods and services by taking the time to craft your trademark application carefully. It is essential 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 Broad Language
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 general enough to receive broad protection for your goods and services and their natural extensions. If you are overly broad with your description, your assigned trademark examiner will likely require you to clarify your services and refine your language. Finding the middle ground is critical to obtain robust protection that accurately reflects your business model.
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. Trademark examiners are not industry experts, so follow the K.I.S.S. method and keep it simple . . . silly.
Including Other Trademarks In Description
Many companies manufacture products as accessories for third-party 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 and only reference your products.
Including Goods & Services Not Sold To The Public
A trademark application should never reference goods or services not offered to the public unless you are filing your application on an intent-to-use basis.
Using Incorrect Punctuation
Punctuation marks have various utility in a trademark application. The use of a semicolon in the goods & services description signifies a separate good or service, while 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.
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Hawkins IP is an intellectual property law firm specializing in the protection, maintenance, and monetization of its client's trademarks. We are dedicated to representing creators. If you have any questions regarding this article or would like to speak with an experienced trademark attorney, reach out and let's chat.