What Does Trademarking Goods and Services Involve?

To protect the intellectual property of your brand in relation to the goods and services you provide, it is important to obtain a trademark or service mark. Trademarking your brand in association with your goods and services gives you exclusive rights to the use of your name and logo in conjunction with these goods and services. This can include words, names, symbols, and designs or a combination of these things that identify your brand.

Obtaining a trademark is relatively simple with a few critical steps:

  • Select your trademark or service mark: Create your brand name and image. Your mark should be able to be registered and protected. It should be specific and unique enough to identify the source of the goods and services. It should also be distinguishable from the marks of other providers of similar goods and services
  • Apply for a trademark: You obtain your trademark through an application with the United States Patent and Trademark Office (USPTO). The application for a trademark is where you make the link between your brand and the goods and services provided. Here you describe in detail the goods and services that are covered under your brand. It is important to ensure your goods and services description has the right components to properly cover your trademark.

Key components of the goods and services description are:

  • International class number: These classifications are set out under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (10th ed. 2011). There are 45 different class codes that you can classify your application under. Thirty-four of these classes are for goods, and 11 are for services. Within these classes, there are over 11,000 goods and services classified. It is important to select the international class number that best describes your product or service.
  • Goods and services description: You must identify your goods and services with a specific description of what you are protecting in association with your brand under your application. You can search for acceptable goods and services using the Acceptable Identification of Goods and Services Manual. It is possible to include goods and services belonging to more than one class on a single application, but you will then need to include multiple classes on your application. This will result in higher application fees.

Why Is Trademarking Goods and Services Important?

Trademarking goods and services is important, as it provides a couple of benefits:

  • Notice to the public: Your trademark application is a matter of public record, so the fact that you are the owner of the trademark is clear and accessible to others.
  • Legal presumption of ownership nationwide: Your trademark provides you ownership of the rights under the trademark in all states.

Reasons to Trademark Goods and Services

Registering a trademark protects your intellectual property associated with your brand. This includes:

  • Exclusive rights to use the mark: Once you have your trademark, you own the exclusive right to use your mark either on or in association with your brand.
  • Preventing unauthorized use: Having a trademark gives you the right to protect your brand in cases of unauthorized use of your mark in conjunction with the same or similar product offerings that you have protected under your trademark filing.

One thing to know about trademarking goods and services is how far the trademark extends. Except for famous ones, they typically don't extend to protect all products and services. For example, a trademark for the name TORIE toothbrushes wouldn't extend to a completely separate industry, such as dog collars. You can't use trademark law to stop someone from using the name TORIE for a pet supply company. You would not expect a company named TORIE to sell both toothbrushes and dog collars/pet supplies.

However, if another company started selling other oral hygiene supplies under the name TORIE, your trademark protection could restrict this from happening. Trademark rights do protect you if someone tries to sell similar services or goods to what you provide under your mark.

Reasons Not to Trademark Goods and Services

There may be some cases when it may not be beneficial to file for trademark protection. A few reasons include:

  • Limited lifespan: If the period of time in which the mark will be in use is limited in nature, it may not make sense to file for trademark protection. If the mark has not been obtained in advance, trademark protection may not be granted before the brand's lifetime has ended.
  • Potential public objection: A trademark filing is public record and subject to a public notice period. You may wish to not file for trademark protection if you are worried about potential objection to your trademark in association with the goods and services you are preparing to offer.
  • Rigidity: Once you have filed your trademark application, your brand is associated with the specific goods and services on your application. It is not always easy to change a trademark application once filed. If you do wish to add additional goods or services, or if your description was not complete or accurate enough on your initial application, you may be required to file a new trademark application in order to obtain the trademark protection.
  • Patent or copyright: Trademarks generally apply for protection of goods and services. If you are seeking intellectual property protection for an invention, you should consider a patent instead of a trademark. For artistic or literary work, a copyright would be more appropriate.

Common Mistakes

While the process for filing for trademark protection is not extremely difficult, there are some pitfalls to avoid to make sure you receive the proper protection for your brand:

  • Your mark is too generic: If your trademark is too generic to be able to distinguish your service from that of a competitor, your application could be denied.
  • Unclear depiction of your mark: Your trademark application must contain a clear representation of the mark you wish to register. This depiction will also be published along with your trademark registration.
  • Duplication of an existing trademark: If you file for a trademark for a brand and product combination that is already trademarked, you will not be able to receive your trademark and may need to rebrand. Check the USPTO Trademark Electronic Search System (TESS) database for existing trademarks to ensure you are not duplicating an existing trademark.
  • Incorrect classification: You must classify your product or service into at least one of 45 categories. Of those categories, 34 are for products, and 11 are for services. If your product or service is classified incorrectly, you may not have trademark protection. If your product or service qualifies for multiple classifications, you should include multiple classifications on your application. Note that there are application fees for each class. Choose the correct class(es) for your mark.
  • Incorrect or incomplete description: Only the specific goods and services mentioned within your application are covered under your trademark, so it is important to be specific and complete on the description. Goods and services not associated with your mark in your application can be used by others, preventing an unlimited monopoly on the use of a mark.
  • Repeating the class heading: For each description provided, it is important to choose an international trademark class or classes. The description can't repeat the title or heading of the class. For example, if your mark is for a brand of t-shirts, you would use Class 25 (clothing, footwear, and headgear). In the description, you shouldn't repeat any of the words from the class heading. Instead, you would need to provide more detail, such as “clothing, namely t-shirts").

Importance of Categories

In addition to writing or including a pre-approved description with your application, the USPTO requires that you choose at least one of the trademark classes of services and goods, used internationally. Review the Schedule of International Trademark Classes of Goods and Services to find the correct class(es) for your mark.

It may seem repetitive to describe your service or good and then choose its classification. The USPTO needs this information to determine the correct fee for your application. Services and goods are split into classes and have different fees. If your mark falls under several, you would have to pay the fee for each class.

The categories for trademark classification are extremely important. If you misclassify your mark, you could end up without the protection you need in your industry. The USPTO uses these categories to keep track of and differentiate between the many marks that are registered annually. A logo or word could qualify as unique enough to be registered in more than one class.

For example, Dove has a trademark on its logo that is used on soap products, while another Dove company manufactures chocolate. The word “Fresh” could be used by a company that manufactures personal hygiene products and by a provider of food and beverages.

You may need to perform some research to find the right class for your mark. If your company manufactures belts made from woven cords, you may think it belongs under class 22, which includes fibers and cordage. However, the correct class would actually be class 25, which includes clothing. When a service or product is new, it can be especially challenging to figure out in which category its mark belongs.

If your business delivers grocery orders to customers' homes, you may choose to register the mark under several classifications:

  • Class 9: Scientific and electrical apparatus (for the method of ordering, such as a mobile app)
  • Class 29: Processed foods and meats
  • Class 35: Business and advertising
  • Class 39: Storage and transportation

When a service or product falls under the same class as a similar service or product, the risk of customer confusion is high if the names are too alike. On its own, the class of a product or service doesn't offer a conclusive answer as to whether its mark legally conflicts with another mark. The classification system applies on an international basis, combining every product and service available into just 45 classes. Cosmetics and abrasive cleaners technically fall under the same category. Products falling under the same class could be marketed completely differently from one another, even if they have similar marks.

Frequently Asked Questions

  • How Do You Identify Goods or Services?

You can search for acceptable goods and services using the Acceptable Identification of Goods and Services Manual (ID manual). This manual includes a listing of descriptions that are pre-approved by the USPTO. It is not recommended to copy the description of the goods and services from the database, but to use it as a guide. If the same product or service can fall under multiple classifications, look at the differences to ensure you adjust the description to fit the chosen classification or otherwise change the classification.

If a pre-approved description in the ID manual completely and accurately describes your services and/or goods, you can select that description instead of having to create one. However, if you do write your own description, the review fees will be higher. When the reviewer looks at your application, they can spend less time during the review process if a pre-approved description is included.

Why Is the Description So Important?

The goods and services description is used by the USPTO to check if the application is infringing on an already existing trademark. The description is also used when reviewing future applications to see if someone else is trying to file an application that would infringe on your trademark. The description distinguishes your business from other competitors.

An example of a descriptive goods and services statement for a sailing charter company might read "luxury sailing company providing overnight charters and sunset cruises in the Caribbean." You can always check the registration record for a competitor's trademark on the USPTO website to see their goods and services description.

  • Can I Write My Own Description?

Although you can write your own description, it is often challenging to write a complete and accurate identification of your services or goods. In this description, you must include information about what you will provide or sell in broad terms but not so broad that your application is rejected. After filing the application, you cannot make changes to the description to make it broader. If you had to make changes after filing, your application could be rejected, and you would not receive a refund for the fee.

Using a pre-approved description ensures that the USPTO will not reject or object to it. However, not all services or goods will be clearly identified by one of the descriptions included in the ID manual. If your application requires a custom description due to a lack of an accurate pre-approved description, you will need to write one rather than trying to choose something that may be close.

The USPTO could reject your application if the description isn't close enough to an accurate description of your services or goods. Even if the application is approved, the registration may be extremely narrow. This means it won't provide the protection needed or could be canceled due to inaccuracy.

Steps to File

There are a few steps to file for your trademark:

  1. Select your trademark or service mark: Ensure that your mark is not too generic and that you have a clear depiction of your mark.
  2. Search for existing trademarks: Search the USPTO TESS database for already existing trademarks.
  3. Classify your goods and services: Choose the best matching classification or classifications for the goods and services you will be providing.
  4. Describe your goods and services: Provide a detailed and specific list of goods and services you are filing for in your application. Make use of the Acceptable Identification of Goods and Services Manual of the USPTO to help you with your description.
  5. Determine your basis for filing: If you have already used your mark in conjunction with commerce, then you should file under the basis of "use in commerce." You must also provide a statement and specimen of how and when the mark was used for commerce. If you have not yet used your mark in commerce, then you should file under the "intent to use" basis.
  6. Provide your contact information: You will need to provide your name and contact information in conjunction with your application.
  7. Determine trademark filing fees: Trademark filing fees are calculated on a per class basis, and not based on the number of usages within a classification. A trademark fee is $225 per class for a TEAS-Plus or $275 per class for a TEAS Reduced Fee electronic application, as of January 14, 2017.
  8. Consider a trademark attorney: If you are unsure if you have properly covered all of the above steps, you may wish to consider hiring the services of a trademark attorney.
  9. File your application: Use the online Trademark Electronic Application System (TEAS) to file your application.
  10. Monitor your application/provide information: You may be required to provide additional information for your application to be processed, so monitor the status of your request via the Trademark Status and Document Retrieval (TSDR) system.

Once your application is accepted and your trademark is published, you will need to provide evidence of use or ask for an extension for the statement of use if you filed under an intent to use basis. Once your trademark is established, you will need to maintain your registration with the USPTO to ensure your trademark does not lapse.

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