One of the most critical questions in a trademark application is, “What are the goods and services associated with your trademark that you would like to protect?”
This question is so critical because it sets the rights and scope for your trademark protection. United States trademark law protects your trademark as it relates to the goods or services that you provide. You can have a monopoly within that specific category, but not across the board.
For example, there’s Delta Airlines and Delta Faucets. One is an airline company; one is a faucet maker. Similarly, there’s Dove Soap and Dove Chocolate. One is a chocolate maker; one is a soap company.
You can expect your trademark rights to extend to whatever you’re offering, so it’s very important to make sure you get the language right in your application.
3 Tips for Describing Goods and Services in Your Trademark Application
When looking at the trademark application itself, the USPTO provides a ton of instructions and text in this section. It’s hyper-technical and extremely important to get right.
Here are three tips for using the best language in your trademark application.
1. Start by describing the products or services you plan to offer in layman’s terms.
The first thing to do is start by listing the products or services you plan to offer in layman’s terms. This means stripping out all marketing language and industry lingo.
If you’re offering a clothing brand, will you be selling shirts and hats? If it’s a jewelry brand, will you be offering necklaces and bracelets? A more complicated scenario is protecting a software program. What are the functionalities of the software program?
Just being able to write out and understand in layman’s terms the goods and services you’re going to offer is an extremely important step, and surprisingly difficult for a lot of companies to complete. Once you have this general understanding of your goods and services you can then being the process of converting that description into language that will be acceptable to the USPTO in a trademark application.
2. Be realistic, and not aspirational, in your list.
The second tip when thinking about the goods and services you would like to include in a trademark application is to be realistic and not aspirational. Before a trademark registers, all of the goods and services listed in the application must be actively selling in commerce, meaning you actually have to have customers or clients.
If you pack your trademark application full of hundreds of product and services that you someday plan to offer, that application cannot mature into a registration until you actually offer everything you’ve listed.
You need to focus on things that are within a one, two or three-year-time frame at the most. You can keep an application active for about three years after the initial filing, so it’s okay to include goods or services that are close in the pipeline. However, be very realistic about the goods or services you’re going to offer or risk your registration never maturing.
3. Understand the USPTO’s technical language requirements.
The final tip is to understand that the USPTO has certain language that it will accept when identifying the products or services you offer. In order to meet these technical requirements, hiring a trademark attorney can be beneficial.
The USPTO provides something like a manual of keywords you can choose from to describe your goods or services, but there is also an option to create custom language. Either way, your language still has to fit within certain guidelines. If it doesn’t, you’ll receive an office action or potentially a denial of your trademark application. So, it’s incredibly important to know that there’s very significant technical requirements with the language that you can use in a trademark application to describe your goods and services.
Using appropriate language to describe goods and services in a trademark application is critical. It sets the rights and scope for the protection you will receive for your brand, so be sure to pay adequate attention to this section of your application when registering your trademarks.
If you have any questions about your trademarks, please reach out to a Gerben Law attorney through the contact form on our website.