Are many goods or services in a US trademark application OK?

Can you have too many goods or services in a US trademark application?

Most foreign countries do not require use of the trademark for registration. So it is common to find a high number of goods or services in Madrid trademark applications that originate outside the US. The lack of a use requirement in foreign countries incentivizes trademark applications with excessive goods and services spanning several classes. If a foreign applicant does not have to show use in their country, why not throw everything in the Madrid application? Let’s see how US trademark applications by non-US Madrid applicants may lead to issues when covering several goods or services.

What is the problem with too many goods or services in a US trademark filing?

US law requires a bona fide intent to use an applied-for mark on all the goods or services identified in a US trademark application. This requirement applies to Madrid applications under Section 66(a) designating the US. The issue with excessive items is that the applicant may never have had a real intention to use the mark on certain items.

Any Madrid based application extending into the US with an extensive list of goods or services will always raise red flags regarding the lack of a bona fide intent to use the mark on each and every item identified in the application.

How would you show a lack of bona fide intent to use with excessive goods or services?

Proving a negative can be challenging. Nonetheless, it may be possible to show a lack of bona fide intent to use by pointing to the absence of business activity. For example, the nonexistence of any business plans or advertising might prove lack of bona fide intent to use, especially if tens or hundreds of goods or services are involved.

Before proceeding with a high quantity of items in the US, foreign applicants should examiner their own intent at the time of filing. Furthermore, non-US applicants should also consider whether they have any available evidence to support their genuine intent to use. Such evidence may come in handy if and when their US trademark filing is challenged.

Does a trademark registration with a high number of goods or services have a higher risk of a USPTO audit?

Yes, a registration with four or more goods or services in one class would qualify for the Post Registration Audit Program by the USPTO. A multi-class application with two or more goods or services in at least two classes would also be susceptible to a trademark audit.

How can foreign Madrid applicants improve their US trademark applications?

Non-US Madrid applicants can take steps reduce the vulnerability of their US trademark application. Any items with no realistic chance of being used in the US should be deleted. Ultimately, usage is not required to register a mark based on Section 66(a) or Section 44(e). The concern is whether the applicant had a bona fide intent to use the mark on all the items.

If selling certain goods or services are wildly unrealistic, a Madrid applicant should strengthen their US application by removing those items. Paring down the goods or services would result in a stronger US registration that may be able to withstand a challenge claim based on lack of bona fide intent use.

How to respond to Madrid provisional refusal by USPTO

Here is a helpful article on how to respond to a Madrid rejection in a US trademark application.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
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2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
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Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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