traverselegal - March 19, 2012 - Filling out Your Trademark Application, Trademark Law
MARK TRADEMAN, TMIN NEWS ANCHOR:
Confused about how to identify your goods and services? You’re not alone. Stay tuned for some important tips and keep in mind…
Correctly identifying your goods and services is one of the most critical aspects of your application. A failure to correctly list the goods and services with which you use the mark may prevent you from registering your mark. And you will not be given a refund.
If you’re asking what an “identification” is or what is meant by “goods and services,” think about it this way. What do customers purchase from you? An actual physical product that bears your trademark? Or do they hire you to perform an activity for them? If it’s products, you’ve got goods. If it’s activities, you’ve got services.
Although the determination of whether you’ve got goods or services can be confusing, it’s critical that you make the correct identification. To help you along, let’s take a look at an example that applicants often find confusing: “T-shirts” and the silk screening of t-shirts.
Let’s say you designed a bunch of t-shirts and you want to sell them. If a customer purchases one, you’re providing goods: t-shirts. Note that the customer didn’t pay you to perform an activity. He paid you for a “thing.” You, then, are a goods provider and you’d want to identify your goods as “t-shirts.”
On the other hand, let’s say a customer has created a new design that she wants you to print on a t-shirt. If you do as she asks, you’re providing a service: a silk screen printing service. Although the customer does end up with a t-shirt, she didn’t come to you to purchase a “thing.” She hired you to perform an activity. You, then, are a service provider and you’d want to identify your services as “Imprinting messages on t-shirts” or “Silk screen printing.”
But “Wait!” you might be asking. “Don’t I need to put down that I’m selling my t-shirts?” The quick answer is “No.” The selling of your own goods is never a service, but the providing of a convenient place to purchase goods is.
So, if you have a website or a retail store where you provide a place for people to purchase goods, such as t-shirts, then you’d want to identify “retail store services.” For our example here, your services would be “Retail store and online retail store services featuring t-shirts.”
See the difference between them all? It can be confusing, but just remember: goods are things that bear your trademark; services are activities that you perform for others.
The Office has a listing of acceptable goods and services in the Trademark Manual of Acceptable Identifications of Goods and Services, also known as the ID Manual. For guidance, spend a few minutes with the ID Manual and see if the Manual contains an identification that accurately reflects your goods and services. If so, use that ID in your application.
If not, and you’re applying through the regular TEAS form, use the “free-form text” option to explain the goods and services in your own words.
If the accurate and appropriate ID you require is not in the ID Manual, and you’re applying through the TEAS PLUS form, you have several options. You can e-mail the Office to see if the ID can added to the Manual or you can start over and use the regular TEAS form.
In any event, be aware that “close doesn’t count.” Merely choosing an identification that is similar to your goods and services, but that does not accurately reflect them, can cause major problems in your application and could prevent the eventual registration of your trademark.
In addition, it’s important to list the correct ID, because you can’t add additional goods and services later and you can’t switch back and forth between goods and services if you get it wrong.
Also remember that an ID should not indicate a “manner of use.” That is, the ID should not indicate how you market your goods and services. So, unless you actually sell business cards to other people or provide actual advertising services for other people, do not write down “business cards” or “advertising.” Your ID should specify either the actual goods upon which your mark is used or the actual services with which your mark is used.
Another common mistake is to list every type of good or service within an International Class. Doing this may cause major delays for your application. You should only list the goods and services with which you are actually using the mark or have a bona fide intent to use the mark.
If you discover later on that you want to add additional goods and services, you must file a new application to cover those goods and services. Essentially, although you can modify wording in your original application to clarify the exact nature of your goods and services, you cannot simply add goods and services to that application.
Correctly identifying your goods and services is critical. Take your time and choose carefully and wisely. The registrability of your mark may depend on the ID you choose now.
Feel free to replay this broadcast and click on any of the links within the form for more information. And keep an eye out for more of these broadcasts throughout the website. I’m Mark Trademan, Trademark Information Network.