Which Goods/Services Should I Include in My Federal Trademark Application?
A federal trademark registration provides valuable protection in the United States. However, the United States Patent and Trademark Office (USPTO) only extends trademark protection to the trademark identified in your federal trademark application for those goods/services set forth in your trademark application. Therefore, correctly identifying your goods/services in the correct class is a critical component of the federal trademark application process.
Overly broad descriptions of goods/services in U.S. applications are common especially among foreign applicants because foreign applicants are accustomed to the practice in their home countries of permissively crafting the description of goods/services as extensively as possible to obtain a broad scope of protection. Further, applicants are often confused by the trademark classification system for goods/services and how the goods/services identified in an application define the scope of trademark rights. A good is a physical item that people purchase from you. A service is an activity that you perform for other people.
Here, we review what is required, how to properly research your goods/services, and practical pointers for preparing for your trademark application.
Specificity is Required for Federal Trademark Applications
According to the U.S. Trademark Rules, a federal trademark application must specify the particular goods/services with which the applicant uses, or has a bona fide intention to use, the trademark in commerce. [Additional information about use-based and intent-to-use applications can be found here: https://www.mavenip.com/blog/intent-to-use-applications-vs-use-based-applications/]. To “specify” means to name in an explicit manner. The identification of goods/services must be specific, definite, clear, accurate, and concise. The identification should set forth common names, using terminology that is generally understood. For goods/services that do not have common names, the applicant should use clear and succinct language to describe or explain the item. Technical or esoteric language and lengthy descriptions of characteristics or uses are not appropriate.
Where to Research Goods/Services
All goods/services are divided into different classes according to an international system called The Nice Classification. The Nice Classification system is made up of 45 classes where Classes 1 through 34 are different goods and Classes 35 through 45 are different services. These 45 Classes cover all goods and services that one could apply for. The classes for goods are mainly based upon the material or subject matter of use, while the classes for services are based on the professions or the result of the service. You can access the Nice Classifications here: https://www.wipo.int/classifications/nice/en/.
You will notice that the Nice Classifications are broad categories of goods/services. In order to file a trademark application with the USPTO, you must specifically identify the goods/services within the broad categories. You cannot file a trademark application to cover an entire class of goods simply by identifying the Class number.
Therefore, within each Class, you must provide a description of each individual good/service that you seek trademark protection for. Acceptable descriptions of goods/services for a federal trademark application may be found with the Trademark ID Manual published here: https://idm-tmng.uspto.gov/id-master-list-public.html. This Trademark ID Manual is searchable and provides a tremendous number of descriptions of goods/services that have been used to describe goods/services in previously-filed trademark applications. If you find the wording which accurately describes your goods/services in the ID Manual, you may qualify for a reduced filing fee of $225/Class. If you cannot find an acceptable description, or none of the entries in the Trademark ID Manual accurately describes your goods/service, you may describe your goods/services in your own words, subject to a filing fee of $275/Class. In either case, the Trademark Examining Attorney assigned to your application may require that your phrasing be as close to existing descriptions as possible or require that a custom description be narrowed to a greater extent than an existing or approved description. Therefore, to the extent possible, it is best to find your goods/services in the Trademark ID Manual.
For example, the Nice Classification identifies Class 025 as covering the general category of Clothing, Footwear, and Headgear.
However, an applicant could not file an application for Class 025 to cover all Clothing, Footwear and Headgear. A federal trademark applicant must specify the type of Clothing, Footwear and Headgear.
By doing a search for “pants” in the Trademark ID Manual, an applicant would find a total of 56 different entries. We suggest selecting the broadest possible description for your goods/services (i.e. “pants”) along with the specific “pants” items that you are selling (for use-based applications) or intending to sell (for intent-to-use applications). For example, “lounge pants”, “yoga pants”, etc.
The Goods/Services for Use-Based Applications and Intent-to-Use Applications
For a use-based federal trademark application, the goods/services must meet the “use in commerce” requirement, that means the goods/services have been sold and shipped within the United States in the ordinary course of trade with the trademark preferably displayed on the product itself or on external materials such packaging, tags and labels. For a use-based application, all of the goods/services identified in your application must meet this “use in commerce” requirement. In other words, a use-based application cannot include a combination of goods/services that are in use in commerce with others that are not. If you include goods/services that are not in use in commerce, you run the risk of the application or registration being deemed void by the USPTO. Therefore, identify each goods/service that meets the use in commerce requirement for your use-based application.
When filing a federal trademark application based upon an intent-to-use, you may properly identify the goods/services that you intend to associate with any proposed trademark. The application includes verified statements, oaths, and declarations that the applicant has a bona fide intention to use the trademark in commerce on or in connection with the goods/services listed in the application as of the application filing date. Identifying laundry lists of goods/services in an intent-to-use application is not recommended because lacking this bona fide intent-to-use may create the basis for a third party to attack an application or registration. Also, prior to registration, the applicant must use the trademark in commerce on or in connection with all the goods/services specified in the application and file an allegation of use (i.e., either an amendment to allege use or a statement of use). At the time of filing the allegation of use, any goods that are not in use must be deleted (or the subject of a Request to Divide). Please refer to the blog post referenced above to learn more about use-based and intent-to-use applications.
Specific Considerations for Amazon Brand Registry
Trademark Rules and laws dictate the specificity required for your description of goods/services in a federal trademark application. For Amazon Brand Registry, the description of your goods/services is also important because many of the features available to Amazon Sellers depend on the scope of goods/services identified in your application. However, once you have a brand enrolled in Amazon Brand Registry, you can add any goods/services you want to that Brand (so long as you meet Amazon’s rules regarding those goods/services). In other words, Amazon Brand Registry is brand-specific. That being said, the distinction of goods/services becomes critical when you are trying to use certain features of Amazon Brand Registry like their brand protection measures (trademark violation, listing violation, or seller violation tools).
For example, let’s say you filed a federal use-based trademark application for BRAND A in connection with “t-shirts” and successfully enrolled in Amazon Brand Registry through the IP Accelerator program. Next, you decided to sell “coloring books.” “Coloring books” was not identified in your federal trademark application. While you can add listings for “coloring books” to your BRAND A in Amazon, you will need to file a second federal trademark application to cover “coloring books” if you want to take advantage of Amazon’s brand protection features. It is not required to file a second trademark application before you sell the “coloring books” on Amazon, but it is recommended that you file a second trademark application for those goods at some point. This not only ensures trademark protection for all of your goods/services but allows you to be able to take advantage of the full capability of Amazon’s Brand Registry features.
You are the best person to describe your goods/services since no one knows your business better than you – Conduct your research for your goods/services.
Be specific – failure to do so may trigger an initial refusal to register (i.e. Office Action) by the USPTO.
Once an application is filed, you cannot add goods/services to your application therefore, it is important to accurately identify ALL the goods/services that you are selling, offering, and/or advertising or intending to sell, offer, and/or advertise.
A trademark Class is based on the goods/service, not the way you use your trademark to market or advertise your goods/service. Therefore, if you sell “candy bars” and you advertise your “candy bars”, you are not in the business of advertising.
If there is a broad way to describe your goods/services, then we suggest doing so along with specific options for your goods/services where available.
Before applying for any trademarks, it is always best to seek the guidance of an attorney experienced in trademark law. We can review your trademark, application, or USPTO refusal and work with you to determine the course of action suitable for your needs.