When an owner files an application with the United States Patent & Trademark Office (“USPTO”) to register a trademark, the owner must provide an accurate and complete description of the goods/services with which the trademark will be associated. This is because similar trademarks can be used with very different goods/services. This is why Delta Airlines can coexist in the market with Delta Faucets. Trademarks are about what is in the minds of consumers. In general, consumers will not confuse the same word mark used for transportation and used for kitchen and bath accessories.

Describing the goods/services on a trademark application is not as simple as identifying the international class of goods/services. So, for example, identifying the goods as “paper products; books — Class 16” is not sufficient; more detail is needed.

Why Does the Description Matter? Trademarks are legally protected from infringement. If another firm or business tries to use your trademark — or one that is confusingly similar — a trademark infringement lawsuit can be initiated to stop the other from using your trademark. But, legally, another firm’s use of your trademark is only infringement if the trademark is being used with respect to the same types of goods and/or services identified in the trademark application. If there is infringement litigation, courts will closely examine the identification of goods in the application. So, it is important that the description be as broad as possible to provide as much legal protection against infringement as possible.

But, at the same time, the description cannot be too broad since that might lead to challenges to the validity of the trademark and/or might “bump up against” a similar trademark in a nearby field of endeavor. The USPTO uses the description to search for other similar trademarks or service marks that are already registered. One cannot register a trademark if the same mark or something similar has already been registered. But, again, similar trademarks can coexist as long as they are in divergent parts of the marketplace. Using a very broad description means that the USPTO will make a very broad search for similar trademarks which can increase the risk of a denial based on an already-registered trademark.

Note that it is important to get the description right at the beginning. Once the application for registration is filed, the description cannot be changed. If a change is needed, then, generally, a new application must be filed. Note also that the USPTO provides a very long and searchable database of pre-approved descriptions.

From this, we can list these tips for writing a good description of goods:

• Do not use the broad descriptions used for the international classes
• Avoid using broad category-words in the description that might be grouped in different international classes — “cookware,” for example, is too broad since it could fall under several international
• Make sure that the description is broad enough to cover all the goods/services that your company sells
• Avoid being too narrow which limits the legal protection afforded by the registration
• Avoid using narrow category-words such as identifying machine parts for a “pickup truck” when the parts can be used for any “truck”
• When possible, use the USPTO’s pre-approved descriptions (or a portion of a pre-approved description)
• Use all the descriptions that apply and use semicolons — for example: children’s toys; plastic toys; bendable toys; action figure toys; etc.

As can be seen, completing an application to register a trademark can be complex and requires a high degree of legal talent and experience. If you have questions about trademarks or need help registering a trademark, contact the proven trademark attorneys at Revision Legal at 231-714-0100.

The International Classification System

The USPTO uses the International (Nice) Classification system, established by the Nice Agreement of 1957. There are 45 classes in total: Classes 1–34 cover goods, and Classes 35–45 cover services. Applicants must identify all relevant classes and pay a separate fee for each. The current TEAS Plus fee is $250 per class; the TEAS Standard fee is $350 per class. Selecting the correct class or classes is strategically important because a trademark registration provides protection only for the goods and services identified in the registration and for closely related goods and services in the same trade channels.

Acceptable Identification Language

The USPTO requires that goods and services be identified with “reasonable particularity.” Vague or overbroad identifications will be refused by the examining attorney. The USPTO maintains the Acceptable Identification of Goods and Services Manual (ID Manual), an online searchable database of pre-approved identification language. Using ID Manual language significantly reduces the risk of office action rejections. Common identification errors include:

• Overly broad identifications: “Computer software” alone is unacceptable; the software’s function must be specified
• Trade class mismatches: Filing a software application in Class 9 but describing services that belong in Class 42 (software as a service)
• Functional language: Describing the mark’s purpose rather than the goods or services themselves
• Using brand names: Identifying goods by a competitor’s brand name rather than the generic product category

The Specimen of Use Requirement

For use-based applications, each class requires a specimen showing the mark in actual use in commerce with the identified goods or services. For goods, acceptable specimens include product labels, hang tags, and product packaging. Screenshots of product pages on websites are acceptable if they show the mark near the goods and include purchase functionality. For services, acceptable specimens include screenshots of a website advertising the services under the mark, brochures, and advertisements—provided they show the mark in connection with the described services.

The specimen requirement continues beyond initial registration. At each renewal filing (between years 5–6 and 9–10 after registration, and every 10 years thereafter), the owner must submit a new specimen showing continued use.

Intent-to-Use Applications

An intent-to-use (ITU) application under 15 U.S.C. § 1051(b) allows an applicant to file before the mark is used in commerce, locking in the application date as a priority date. After the USPTO approves the application, it issues a Notice of Allowance. The applicant then has six months to submit a Statement of Use showing actual use in commerce, with up to five extensions of six months each (total of three years) available upon request and payment of fees.

The ITU pathway is particularly valuable for product launches where the brand name is finalized before the product reaches market. It prevents competitors from filing for the same or similar mark during the development period.

Amending Goods and Services Descriptions

After filing, the identification of goods and services can only be narrowed, never broadened. If an applicant files with an overly narrow identification and later seeks to cover additional goods or services, a new application must be filed. This underscores the importance of getting the identification right at the time of filing. An experienced trademark attorney will draft identification language that is specific enough to be acceptable to the USPTO but broad enough to capture the full scope of the client’s actual and anticipated commercial activities.

Contact the trademark attorneys at Revision Legal at 231-714-0100 to ensure your trademark application is filed correctly.