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.