iOne of the most important steps when preparing a new trademark application is creating the list of the products or services that the trademark will identify.
Think about it: This list defines the scope of your registered rights in a mark. The U.S. Patent and Trademark Office (USPTO) will use this list to determine whether your mark is confusingly similar to those in prior applications and registrations, and competitors will use it to gauge whether they can get away with adopting a similar brand. Plus, if your description of goods and services is inaccurate, your trademark registration can be exposed to cancellation. High stakes!
Ever take a look at one of these descriptions and wonder what on earth it means? “Providing temporary use of on-line non-downloadable software and applications for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}”? That’s a lot to take in all at once – so let’s break it down.
Shorter and broader is usually – but not always – better. To achieve the greatest scope of protection for a brand, consider drafting a description with a short list of broad terms. (How about “processed vegetables” rather than “canned peas, canned corn, canned carrots,” or “footwear” instead of “sandals, sneakers, and boots”?) This strategy should save you time and money during the post-registration years, when you’ll have to check on whether the mark is still in use with all the listed goods and services. The USPTO does require some precision, however. For example, trademark applications can’t use vague terms like “systems” or “technology.” There may also be times when drafting a narrower description is advisable for strategic reasons, such as to distinguish a new application from an existing application or registration. And resist the urge to copy a description from a registration issued a few years ago – the rules may have changed since that application was filed.
When preparing an application based on an “intent to use” a mark, think long-term. Give careful thought to creating a list of all the products and services you might sell under the mark within the next 3 years or so. After an application is filed, you can’t add any goods or services – though items may be deleted – so it’s important to create a comprehensive list. Why 3 years? After an “intent to use” application has successfully made it through the opposition period, the trademark owner is given 6 months to submit evidence that its mark is in use to the USPTO. If the mark is not yet in use, the owner may request up to five 6-month extensions.
A great starting point is the USPTO’s Trademark ID Manual. This manual contains descriptions that have already been approved by the USPTO. If this pre-approved language accurately describes what you plan to sell, then you’re in luck. By using this wording, you can reduce the risk of receiving an Office action requesting clarification of your goods description. An added bonus: Lower filing fees! An application containing only this pre-approved language can be filed for a lower cost than an application with customized language that the USPTO would need to analyze more carefully.
Drafting a description of products or services is a little like learning a second language. But if you start with the above tips, you’ll be speaking “fluent USPTO” in no time.
