Drafting the Right Description of Goods / Services for Your Trademark Application
Whether you are already using your trademark commercially and will be filing a use-based U.S. trademark application or have not yet begun using your trademark and will be filing an intent-to-use application, a description of the goods and/or services in connection with which the trademark will be used will be required. Deciding what language to include in that description is critical for several reasons. First, subject to the discussion below (and that is a big caveat), the description should be drafted as broad as possible initially because once the application is filed, there will no longer be an opportunity to broaden the description. Broadening amendments are prohibited. Crafting a broad description, and really taking the time to brainstorm all of the possible goods and/or services in connection with which your trademark will be used, will help ensure your obtaining the benefits of federal trademark registration for the largest number of uses of your mark.
Second, when the Trademark Examining Attorney is reviewing your trademark application, they will conduct a search of all pending U.S. trademark applications and all existing U.S. trademark registrations and will reject your application if they deem your mark to be too similar to any such existing marks. How you describe and characterize the goods/services in your application will significantly impact the search results obtained and how the Examiner analyzes those search results relative to your mark. Therefore, if the market in which you will be using your trademark is a crowded market with many participants using marks that are similar to one another in certain respects, drafting your description of goods/services to minimize overlap with the goods/services identified in existing applications/registrations could be the difference between rejection or allowance of your application.
Finally, even if your mark is allowed based on a relatively broader description of goods/services, the owners of similar marks used for similar goods/services may still, after you have received your registration, file an action with the Trademark Trial and Appeal Board (a division of the U.S. Patent and Trademark Office) to cancel your trademark registration based on alleged likelihood of consumer confusion. Even if you firmly believe in the merits of your case (for example, you do not believe that the marks are too similar so as to confuse consumers and/or you believe that your use of your mark pre-dated your adversary’s use of their mark), these cancelation proceedings can be very expensive, typically costing tens of thousands of dollars and not infrequently reaching well into six figures. And to anticipate a question that I am often asked by clients – no, you will not be able to recoup those costs even if you prevail in the cancelation proceeding.
The above discussion highlights just some of the ways that how your description of goods/services is presented may have substantial consequences. I highly recommend taking significant time before your trademark application has been filed to fully consider what will be the optimal description of goods/services to include in your application because, as I so often find myself saying to clients, “an once of prevention is worth a pound of cure.”