How to correctly identify goods and services in a trademark application

A federal trademark registration provides valuable protection to a trademark in the United States, but that protection only extends as far as the goods and services that were originally set forth in the trademark application. Correctly describing these goods and services, and correctly placing them in the correct "class," is a vital part of securing your trademark rights.

Why is it Important to Accurately Define and Classify Your Goods and Services in a Trademark Application?

Properly identifying the goods and services that you intend to associate with any proposed trademark is of significant importance. Remember that a trademark is a brand name that you want to use to designate and distinguish your goods and service from those of your competitors. But the scope of protection of a federal registration of that trademark is only applicable to the specific international class and the goods and services that you designate and pay for in your trademark application.

At the moment, there are 45 classes of goods and services listed in the “International Classification of Goods and Services for the Purpose of the Registration of Marks” as published by the World Intellectual Property Organization (WIPO) under the auspices of the NICE agreement (an international agreement signed in Nice, France in 1957). These classes are listed in the TMEP at Section 1401.02(a) (the TMEP is the Trademark Manual of Examining Procedure, a manual provided by the United States Patent and Trademark Office, or USPTO, to assist in the filing and prosecuting of trademark applications). As part of your trademark application, you must identify each class of goods or services that you wish to associate with your proposed trademark. For each class of goods or services within which you seek your trademark registration, you must pay an additional fee along with the application.

Beyond the general identification of these classes, you must also provide a description of each individual good or service that you seek to have your trademark apply to. Acceptable descriptions of goods and services may be found within the “Acceptable Identification of Goods and Services Manual" (ID Manual) that is published by the USPTO. A searchable form of this manual is provided by the USPTO, which is perhaps the best way to select an acceptable description. The ID Manual includes a tremendous number of descriptions of goods and services that have been used to describe the goods and services associated with previously filed trademark applications, as well as those descriptions that have been submitted by the public for inclusion to the ID Manual.

An Example--Selecting Your Goods and Services

Let's walk through the practical implications of the above with the following hypothetical: Say your new startup company makes software (or "apps") for smartphones. So now you wish to apply for a trademark application for a brand name, image, logo, etc. that you want the world to associate with your particular software product. So it seems a simple matter to identify your “goods” as: “software”. Done. Easy-peasy. This trademark application stuff is simple.

Not so fast.

First, we need to consider the nature of the product. For example, are you selling/licensing the software itself and allowing people to download the entire software product to their phones, or are you providing a "Software as a Service" (or SAAS) in which the majority of the actual software used by your customers remains on your company's computer servers. If customers download the entire app to their phones (think the non-web version of Microsoft Word), then you would have a “good” under International Class 9 under the NICE agreement. If you are providing access to servers that actually run the software on behalf of your customers (think Google Docs), then you have a “service” under International Class 42. If your product includes both the “goods” of software that users download and the "services" relating to accessing software running on your servers, then your trademark application should designate both Class 9 and Class 42.

Now that we know the classes of goods and/or services that you wish to designate, you must next provide a fairly detailed description for each good and/or service that you specifically wish to associate with the trademark. For example, if your software is directed to a game, you would need to provide a description along the lines of “computer game software” or “computer game software for use on mobile and cellular telephones,” both which are acceptable descriptions according to the ID Manual for gaming software under International Class 9. For related services under International Class 41, you might use the descriptor “providing online computer games.”

There are numerous alternatives to the above descriptions that are available in the ID Manual. In fact, as of the time of this writing, the searchable form of the manual list 584 descriptions including the word "software." Most, but not all, of these entries are in class 9 or 42. Often times an applicant will not find an existing ID Manual description with which they are comfortable. This may be because none of the entries in the manual accurately describes the applicant’s product, or the descriptions in the manual may have failed to keep up with technological changes or changes in terminology within an industry. In such cases, the trademark applicant is free to describe their goods and services in their own words. However, the trademark examiner will likely require the phrasing to be as close to existing descriptions as possible and/or require that the custom description be narrowed to a greater extent than an existing and approved description otherwise might. In addition, a custom goods or services description will require the use of a trademark registration form that has a slightly higher application fee than one that uses existing and approved ID Manual descriptions.

The Example Continued--Implications of Your Selection

Now let's say you go through this whole process, and are awarded a federal trademark registration covering downloadable software and software as a service. Life goes on with your business, and then it turns out that someone starts selling customized smartphones using your exact mark. Can you stop them from using the mark to sell their smartphones? At first blush, it sure seems like smartphones and computer software are pretty close (they are both covered by International Class 9). But here is the rub: you did not include any hardware devices as one of the goods described in your trademark application, so it is quite possible that your competitor here can indeed legally use “your” trademark to sell their devices. Your trademark registration only applies to downloadable software and software services, and it may be that their smartphones are not confusingly similar to the software that you described in your trademark registration (see Bitlaw's legal description of trademark infringement for more information about the confusingly similar standard applied in trademark infringement disputes).

Even worse, it may be possible for your competitor to also gain a registration on their use of the mark on smartphones under the same class 9. If that happens, then your potential rights to expand the mark into related areas can become muddled if not lost altogether.

The take away here is to ensure that you accurately identify ALL the goods and services that you are selling or associating with the trademark that you wish your trademark to cover. Failure to do so may not only give a competitor a means to ride on your mark’s metaphorical coattails, but may also allow a competitor to adversely affect your potential rights to expand the scope of your mark. If you had actually sold a few customized "gaming smartphones" in the past, it would have been best to include these hardware devices in the goods description of your trademark application. The frugality of saving a few bucks by identifying fewer international classifications or identifying limited goods and service on the trademark application can end up costing you a good chunk of the potential value of your trademarks down the road.

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This guidance is provided by the attorneys of Forsgren Fisher McCalmont DeMarea Tysver. Please contact us if you need help protecting your intellectual property. The legal information provided in this guidance should be distinguished from actual legal advice. Please see the Guidance index page for more information.