It can exist hard to write an accurate and complete description (identification) of appurtenances/services in a federal trademark application. When describing the appurtenances and services you are or desire to sell/provide, you want use somewhat broad language, just non besides wide.

Yous cannot broaden the identification later the application is filed. In some cases, if the description is not authentic and the needed changes would broaden the identification, the application may exist lost without a refund. However, if the clarification is likewise narrow, you could give upward valuable trademark protection that yous could otherwise obtain.

Then how practice yous typhoon a clarification that is just correct? I'll explain that beneath, but first, why does the application require a clarification of appurtenances/services?

Why Do I need a Description Of Goods/Services?

Except for famous trademarks, trademarks rights generally do non extend to protect every product or service. If you use the trademark ACME for selling tooth brushes only, you can non use trademark law to stop someone from using Peak for selling sailing yachts. Consumers don't expect that providers of tooth brushes as well sell yachts.

Trademark rights extend to cover instances another uses your mark or something like with goods/service that are the same or like to goods/services as you provide under the mark. Therefore, the scope of trademark protection depends on the appurtenances and/or service that you provide under the marking.

In gild to allow the public know the scope of your trademark rights based on the appurtenances/services, the USPTO requires that you provide a description of the goods and/or services that the mark is or will be used on or with. The USPTO calls the description of goods/service the identification of goods/services.

How does the USPTO use the Description (Why is it Important)?

The description is important because information technology is what the USPTO will apply to compare to other trademark registrations or trademark applications to decide whether there is a conflict. The comparisons occur in two types of situations.

The first comparison state of affairs occurs when the USPTO reviews your application. There, the USPTO compares your marking to previously filed applications and registrations that are live. If the description is besides broad, then the USPTO might notice a conflict between your mark and a previous application or registration, which would non have occurred if your identification was non over wide. This trouble can sometimes be corrected by an amendment to the identification that narrows that identification to avoid similarities with the prior application or registration that the USPTO asserts is in conflict.

The 2d comparison state of affairs occurs when the USPTO is examining afterward filed trademark applications. If your description is as well narrow and so the USTPO might allow a later filed trademark application to be registered. Merely if your awarding had a proper description the USPTO would have blocked a afterward confusingly similar mark from being registered. Therefore, a clarification that is too narrow will not properly operate to block afterward filed trademark applications that would otherwise exist in conflict. As a result, a narrow identification of goods and services will necessarily narrow the blocking effect of your application and narrow your trademark rights.

Now you know why an description is needed and what it is for. Adjacent, nosotros'll meet how to draft 1.

List Your Appurtenances and/or Services

Earlier selecting or writing a clarification of goods or services, first past making a list. The listing should include all of the goods and services that you sell or provide (or intend to sell or provide) under the mark. If you lot are already using the marking, expect at your production list, your advertizing, and your website, among other areas, to complete this list. If you are not already using the mark, await at your business organisation plan or product/service plan to identify the goods and services that you will provide under this mark.

You got Lucky: Selecting a Description from the ID ManualÂ

Now see if y'all got lucky. What do I mean? The USPTO provides a listing of pre-approved descriptions, which are found in the Usa Adequate Identification of Goods and Service Manual (a.thousand.a the ID Transmission). If you find a description(es) provided in the ID Transmission that accurately and completely describes the appurtenances and/or services that you provide or intend to provide, then you can select information technology and yous're done.

If yous cull a clarification from the ID Manual the USPTO will not object to information technology. The USPTO charges lower fees for an application (TEAS PLUS form application) where the description(s) are selected from the ID Manual. Why? Considering the trademark examining attorney volition not need to review that part of your awarding, because the description is already pre-approved. Less work for the USPTO, less government fees.

Withal, many situations are not accurately or completely covered by a pre-approved description in the ID Manual. Many of trademark applications that I file require a custom written clarification considering the ID Manaul does not completely and accurately describe all of my client's goods / services. And if that's true for your case, choosing a description that is "close" but not right or consummate is a problem. Such a "close" selection may consequence in the USPTO rejecting your trademark awarding, or if registered, a registration that is unnecessarily narrow, or one that is subject to cancelation as inaccurate.

If you lot can't find accurate and complete descriptions in the ID Manual don't endeavor to force it by selecting the closest selection. You're going to have to do the hard work of writing a description.

Doing the Hard Work: Drafting an Identification of Good / Services

In some cases, writing your ain description can be one of the most difficult parts of a trademark application to consummate correctly. Here are some pointers that you should know.

Use a Portion from the ID Manual, if Possible

Even if the ID Manual does non have the exact description you need, it might have a portion of a description that you could utilize. You might take that useful portion and change it and/or add to it to provide an accurate and/or consummate description.

Do Not Simply Repeat the Class Heading

For each clarification y'all will need to select a corresponding international trademark class ("trademark classes"), which I explain below. Your description cannot merely repeat the class heading or title of classes of goods and/or services.

For example, form 25 has a heading or title of "Habiliment, footwear, headgear. Providing a clarification of "clothing" is just repeating a portion of the class heading, and would not exist accepted. Instead more particular is needed, eastward.one thousand. "clothing, namely, t-shirts, pants, and gloves."

Similarly, computer software must exist described with particularity. It is not sufficient to provide a description of "computer software." The description of calculator software should include the role or purpose. The description "computer game software" provides a purpose or field of utilize of "gaming." Searching the ID Manual for "computer hardware" shows many examples: "figurer hardware and software for setting up and configuring wide surface area networks", "Computer operating software", "Computer software platforms for {indicate role or apply}," among many others.

Avoid Open Indefinite Words Leading A Listing

Avoid indefinite words and phrases, such as “including,” “comprising,” “such as,” “and the like,” “and similar goods,” “like services”, "etc." Instead, you can use a broad term followed by the terms "namely," “consisting of,” “particularly,” to list a specific set of goods or services inside a broader terms where more particularity is needed, eastward.g. "power tools, namely, drills" or "needle point kits consisting of needles, thread, and patterns" or "projectors, especially projectors for the entertainment industry."

Don't Employ Unqualified Broad Terminology if it would Fall Into Multiple Classes

The USPTO volition object if the broad terminology used in the description would autumn into multiple trademark classes. For example, an clarification of “blankets” would not be accepted without qualifying wording. "Blankets" fall into multiple classes. e.g., fire blankets (class 9), electrical blankets (course 11), horse blankets (form 18), and bed blankets (class 24).

Trademark_IDManual_Search_BlanketsTo avoid using terminology that falls into multiple classes, search the ID Manual for the terminology y'all are considering using in the description. If the results show that terminology falls in more than one class, then you know yous need more specific wording or you need to employ different terminology that does not fall into multiple classes. Click the thumbnail image at the left of this paragraph to see a screenview of a search of the ID manual for "blanket". In that screenview you tin can run into nether the "grade" cavalcade there are results in classes 9, ten, xi, 16, 17, 18, 22, 24, 25, 29, 30, 36, 39, and 43. So, the term "blanket" alone is too broad.

Use Language Understandable to the Boilerplate Person

The language used in the identification should be that which could be understood past the average person, not having an in-depth knowledge of the relevant field. If terms of fine art of a particular field or industry are used in the description and those terms are not understood by the general population, the identification should include an explanation of the specialized terminology.

Use Proper Punctuation (Semicolon vs. Comma)

The apply of a comma instead of a semicolon can be problematic. A semicolon should be used to divide distinct categories of goods or services within a unmarried course. For case, in the case of In re Midwest Gaming & Entertainment LLC, No. 85/111552 (TTAB 2013), the prior registrant's use of a semicolon rather than a comma in the description of services was key to the USPTO providing that registration with a broad blocking upshot. In that case, the bidder applied to annals the mark LOTUS for "bar services located in a casino." The trademark board affirmed the trademark examining attorney's refusal to annals that mark based on a previously registered trademark LOTUS (Reg. No. 3,398,674) for "providing banquet and social function facilities for special occasions; restaurant and bar services."

The applicant argued that "restaurant and bar services" should be limited by the preceding language of "providing banquet and social part facilities for special occasions." Particularly, the bidder argued that the eatery and bar services of the registration, "must exist limited to a specific type of such services and to a specific trade channel and form of purchasers, i.e., to eating place and bar services provided in connection with 'providing banquet and social function facilities for special occasions.'”

The trademark board rejected this argument, stating "Under standard examination practice, a semicolon is used to split up distinct categories of goods or services." The board continued, "Nosotros notice that here, the semicolon separates the registrant’s 'eatery and bar services' into a detached category of services which is not continued to nor dependent on the 'providing banquet and social function facilities for special occasions' services prepare out on the other side of the semicolon."

As the registrant's "restaurant and bar services" were not limited to any particular location or trade aqueduct, and so it was presumed to cover all trade channels or classes of purchasers, including those in a casino. In other words, the registration's broad utilise of "restaurant and bar services" stood on its own, separate from and not limited by "banquet and social function facilities" services. The use of a semi colon provided the possessor of the registered LOTUS marking with broad blocking protection.

If a comma was used rather than a semi colon here, the result of this case would accept been dissimilar. The LOTUS registration would not have blocked the LOTUS bidder. The employ of a comma, when a semi colon should be used, would have narrow the blocking effect of the LOTUS registered trademark.  A narrowed blocking effect means that like marks will be more probable to exist registered and your ability to broadly protect your trademark rights will exist reduced.

Exercise not include trademarks in the Description

Do not include trademarks in your description. If your production is designed to work with a particular other production, describe that other product by and large rather than referring to it past its brand proper noun. Non: "engine parts for use on Ford cars", but instead "engine parts for utilize on automobiles."

Do not include goods or services that you do not sell to the public

If you use marketing to promote your concern (similar most businesses), but y'all do not help others market their business organisation, non-profits, etc., then yous should non listing marketing in your description of services. The description includes goods and/or services that y'all sell to or provide for others.

Reviewing other Registrations in the Field

In the same style that searching for descriptions from the ID Manual tin give you ideas about how to write a description, then besides can searching the descriptions provided in trademark registrations in the same field equally you operate. Reviewing descriptions in issued trademark registrations tin can help you determine if you lot have missed anything in your clarification. Yet, it is ever possible that such registrations could be unduly narrow or wrong. Therefore you should expect at number of registrations to get a better feel for whether one particular description is an outlier. And you should never utilise a description just because it is constitute in a registration if it does non accurately and completely reverberate the goods or services yous provide or intend to provide. Looking at other registrations is but a style to get ideas. But not every referenced registration volition provide good data applicable to your situation. And sometimes in that location are no good examples, or at to the lowest degree not ones that are hands found, for a particular product or service.

The USPTO provides a offset video and a 2d video that further discuss the identification of goods and services. And, section 1402 of the Trademark Manual of Examining Procedure (TMEP) provides additional information on the requirements for a proper identification of goods and services.

Why practice I demand to Select Class(es) of Appurtenances and Services?

In addition to writing a clarification, the USPTO requires you to select one or more than international trademark classes of appurtenances and services from the Schedule of International Trademark Classes of Goods and Services (Schedule) that correspond to the goods and services provided in the clarification portion explained higher up. This step seems repetitive. If you already take a description of appurtenances and services, why do you have to select ane or more classes that this clarification falls into?

The respond is: so that the USPTO tin make up one's mind how much money to charge you for the application. The Schedule divides all of the goods and services into 45 different classes.

The trademark classification organization is an authoritative organisation where the authorities determines how much piece of work it will be to process your application and charges you filing fees accordingly. If yous provide a description that covers many classes, then the USPTO will have to search a larger volume of prior trademark registrations and applications to decide whether your mark conflicts with any previous trademark registrations and applications.

For example, if you are going to use your mark Superlative for the goods of toothbrushes, bath towels, and t-shirts, the USPTO will need to search for prior registrations and applications that merits utilize of ACME (or similar marks) on all of those appurtenances and like goods. Simply if you simply claim the use of Acme for the sale of toothbrushes, so USPTO will have less work to search for the use of Tiptop (or similar marks) for just toothbrushes and similar goods. Not needing to search for mark used with bath towels and t-shirts, means its less piece of work for the USPTO. In that location are less marks to search through when an application claims fewer goods or services.

Selecting the Right Course(es) of Appurtenances and Services

You tin read the description provided for each class here and select the appropriate i or more classes. Another way to determine which grade(es) y'all should designate in your trademark awarding is to look at the classes provided for the aforementioned or similar goods or services provided in the ID Manual. For example, if you lot are going to sell HATS and you search the ID Manual for HATS. An excerpt of the results is shown beneath:

USPTOIDManualHats

If yous sell Difficult Hats then yous would select class 9. If y'all are selling general use hats and so you would select class 25.

As well as explained higher up regarding the clarification, you lot can search existing trademark registrations in your field to see what classes others have selected for your type of goods and services.

Technology Fields

Sure technologies tin span across multiple classes. For example, if you provide downloadable trading software for the finance industry, such as software downloadable via a website  or through an app store, and so yous are providing software every bit goods. In that case, your awarding would include class 9, and may have a description of goods of: "Estimator programs and computer software for electronically trading securities. "

If instead you provide the trading software as software as a service (SaaS) available through a web interface, and then instead of providing goods, y'all are providing services. In that example the correct grade will not be course 9, but will be class 36. Course 36 covers financial services. An appropriate description might exist "Securities trading and investing services for others via the cyberspace." If y'all provide a downloadable app as well as online trading then your application could include both grade 9 and class 36.

In some cases, more than two classes might be needed for the broadest protection in the case that the technology component does not fit within the industry class. For example, if your services involve telecommunications, telecommunications consulting is in class 38 and telecommunications technology consulting is in class 42.

Conclusion

Sometimes providing an appropriate description of the goods and/or services and selecting the right is easy, e.g. hats. In many other cases, information technology is hard. Withal, providing an accurate and complete clarification of appurtenances / services in one of the virtually important components of a trademark application. The description determines (1) whether your awarding will disharmonize with a prior registration or application, and (two) the extent to which your registration will deed to block later filers from registration on similar marks. In short, the description and grade selection impacts the scope of your trademark protection at the USPTO.

Lead image credit to USPTO here.