One of the most important steps in preparing your federal trademark application is drafting a description of services and products. This tells the Trademark Office what you are (or will be) providing to the public under your trademark. The description (also known as an identification or “ID”) is very important, and mistakes here can cost you later on. One of the best tools that you can use is the Trademark ID Manual. In this post, I will explain the description of services and products and available tools to draft it.
Description of Services and Products
When you apply to register a trademark with the U.S. Patent & Trademark Office, you’re not protecting the trademark “in the ether.” Instead, the protection you get for your trademark is limited to when it is used with particular services and/or products. When you file your application, you will tell the Trademark Office what exactly those are. For an intent to use application, you must limit the services/products in your description to those you have a bona fide intent to use in connection with your trademark. If filing on an in use basis, then you must limit your application to the products/services you are already providing under your trademark.
These limitations are extremely important, and a major reason you might hire an attorney to prepare and file your application. Making a mistake in the description could mean that your application gets rejected. Even if you get your registration, a mistake in the description could later make it subject to cancellation.
Beyond these risks, there are also strategic reasons to have an attorney draft the description. For example, you want the description to be as broad as possible. This provides you with flexibility and a greater scope of protection. It’s sad, but this is something that even some trademark attorneys overlook. I have seen trademark filings made by trademark attorneys for their own firm name that specify “trademark legal services.” Why, when “legal services” by itself is completely acceptable to the Trademark Office? Now if that attorney decides to pivot their practice to personal injury (and maybe they should), they have to file a new application for the law firm’s name!
While it is best to have an experienced trademark attorney draft your description services and products, there are tools that can assist you should you decide to do it yourself.
The Trademark ID Manual
The Trademark Office provides a searchable database of descriptions that are acceptable for your application. This database is called the Trademark ID Manual. It provides you with some valuable information that can be used for your description of services and products. If, for example, you want to sell umbrellas, you can type in “umbrellas” and see that it is acceptable. The ID Manual will even tell you the International Class for your service or product.
On the other hand, if you design a new type of laser-guided toothbrush, it is unlikely that the ID Manual will turn up anything for that phrase. Sometimes you can search for synonyms or similar words and come up with a good description. However, there are times (like the example above) where you might not find a good description in the ID Manual. In that case, you might turn to TESS.
Finding Examples Using TESS
You might recall that TESS allows you to search for pending applications and existing registrations at the USPTO. While generally it is used to look for potential conflicts, sometimes you may need to look at examples of other descriptions of services and products that have been used. This can give you a general idea of language the Trademark Office has accepted in the past. It may also give you some ideas of different language you might use to search the Trademark ID Manual.
While you might look up competitors for examples of language to use, be careful. I have had clients copy/paste competitor’s descriptions and tell me to just use that. But when I ask if they are actually intending to provide everything in the description, they are not. As I mentioned before, the description needs to be accurate, or you could end up with a registration that can be cancelled.
Want to Ensure Your Trademark Application Provides the Broadest Scope of Protection?
Preparing and filing your own application is risky. If you are investing in your brand by seeking a federal registration, you want to make sure what you get is airtight and does not overly limit the services and products covered. I have lots of experience in drafting descriptions that meet the Trademark Office’s requirements while also meeting my clients’ requirements. If you would like to speak with me regarding your application, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
