How do you decide which goods or services to include in a trademark application?

Trademarks do not exist in a vacuum. A trademark must always be tied to at least one product or service. You cannot trademark words in the abstract. So when you hear about a celebrity trademarking a phrase, the phrase or slogan must be used in offering a particular product or service. While there’s no limit to the number of goods or services that can be identified in an application, the cost of filing may increase with a greater number of goods/services as discussed below.

A use-based application should only identify only those goods or services which have been sold under the mark. In an Intent-To-Use application, you may recite a broad range of goods and/or services. Make sure not to overdo it. Otherwise, you may get hit with a challenge based on a lack of bona fide intent to to use.

What is an Identification of Goods?

The identification of goods is the description of the products covered in a trademark application. The description of goods is commonly known as the ID of goods/services since it may also include services only. You may also identify a combination of goods and services.

What are USPTO trademark classes of goods/services?

The USPTO categorizes goods and services (for simplicity, both will be called “products”) into 45 different classes for registration. These classifications help distinguish marks. It is common for different trademark owners to register the same mark for different products in different classes. For example, Company A might own a registration for the mark ABC covering tires while Company B owns the same mark for clothing. Even though both registrations are for the same mark(i.e., “ABC”), they may coexist as federal registrations because they are unlikely to lead to any consumer confusion in the marketplace.

A trademark search of the USPTO database for potentially conflicting marks should place a heavier emphasis on the particular class covering your relevant goods or services. Products in one class may overlap with those in another. For example, the USPTO may reject a mark for a food or beverage product because it’s too similar to a mark registered for restaurant services.

Software, mobile applications and web products face a similar issue. While computer software is often categorized under class 9, such a product may overlap with websites under class 35, messaging or telecommunications under class 38, or online social networking under Class 45. Other classes may be involved for web products depending upon the content.

Famous marks may be afforded protection that goes beyond the particular classes in which they are registered. Trademarks are meant to indicate the source of a product. Therefore, it’s not hard to imagine that confusion may arise if someone were to attempt to use and register a famous mark for a completely new product category. Consumers might incorrectly assume some kind of affiliation with the famous brand or that the famous brand is expanding into new lines products.

How to Identify Goods and Services Properly

You can use this searchable USPTO Trademark ID Manual to find pre-approved descriptions of goods and services. Using properly crafted descriptions of goods and services in your trademark application minimizes delay. Well worded descriptions will help avoid non-substantive Office Actions.

How are USPTO Trademark Filing Fees Determined?

USPTO trademark filing fees are determined by the number of trademark classes. So there is no extra cost to include several items if they all belong to one class. The same applies to USPTO fees for filing a Statement of Use in an Intent-To-Use application.

No Broadening Scope After Initial Filing

Special attention should be paid to drafting the identification of goods or services because the identification is practically frozen once the application is filed. You cannot add more goods or services to a previously filed application. Clarifying certain items is allowed. You may also narrow a broad description (e.g., by specifying “kitchen accessories”). The general rule is that you cannot broaden the scope of an original identification of goods/services.

You would have to file a new trademark application to cover any new items.

Differences in acceptable goods/services between USPTO and WIPO (Madrid)

The USPTO may require more specific descriptions of certain products as compared to what was acceptable to WIPO in a Madrid Protocol application [see TMEP 1402.01(c)]. However, the international classification in a Section 66(a) Madrid application must be accepted by the USPTO and may not be changed.

The following two tabs change content below.
Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and entrepreneurs with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com