Trademark Goods and Services: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A Trademark
Trademarking your brand in along with your goods and services gives you exclusive usage of your name and logo in conjunction with these goods and services. 7 min read
What Does Trademarking Goods and Services Involve?
In order 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 right to the use of your name and logo in conjunction with these goods and services. This can include words, names, symbols, designs, or a combination of these that identify your brand.
Obtaining a trademark is a relatively simple procedure, 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 as well as 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, or 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 the 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 classes cover 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 applications, but you will then need to include multiple classes on your application, which 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 it is clear and accessible to others that you are the owner of the trademark
- Legal presumption of ownership nationwide – Your trademark provides you the 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.
- Exclusive right 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.
- Prevent 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 like dog collars. You can't use trademark law to stop someone from using the name TORIE for a pet supply company. You wouldn't expect that a company named TORIE to sell both toothbrushes and dog collars/pet supplies.
Reasons Not to Trademark Goods and Services
There may be some cases when it may not be beneficial to file for trademark protection. These 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.
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. Be sure to 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. 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 there are application fees for each class.
- 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.
Frequently Asked Questions
- How to identify goods or services?
You can search for acceptable goods and services using the Acceptable Identification of Goods and Services Manual. 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 to the chosen classification, or else change the classification.
- 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.
Steps to File
There are a few steps to file for your trademark:
- Select your trademark or service mark – Ensure that your mark is not too generic, and that you have a clear depiction of your mark.
- Search for existing trademarks – Search the USPTO TESS database for already existing trademarks.
- Classify your goods and services – Choose the best matching classification or classifications for the goods and services you will be providing.
- 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.
- 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.
- Provide your contact information – You will need to provide your name and contact information in conjunction with your application.
- 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.
- 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.
- File your application – Use the online Trademark Electronic Application System (TEAS) to file your application.
- 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.
If you need help with trademarking goods and services, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Post your legal need on UpCounsel and match with top lawyers from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.