Trademark Application: Specific Goods and Services

If you own a small business, a new business, or are an entrepreneur, you must trademark your goods and services. This is the best way to prevent competitors from infringing on profits. Including the trademark registration process in your business plan is a good idea regardless of your business structure.

While you do have to pay fees to register your trademark, it's worth it. Seeking legal protection is a part of doing business. Here, we'll explain why describing your goods and services is essential. We'll also briefly discuss whether you can change your description down the road and answer FAQs about the specific goods and services rule for a trademark.

Specific Goods or Services Overview

Small business owners and startup companies don't often consider things like trademark protection when developing their business ideas. But, you must protect yourself if you sell novel products or offer unique services.

You may create new inventions, product lines, and revenue streams as part of business development. This sort of business information should remain private. No matter how hard you try, keeping a lid on developing products and services can take time and effort. This is why you must protect your inventions or ideas with a trademark.

As part of the trademark application process with the U.S. Patent and Trademark Office (USPTO), you will encounter a section where you must describe the specific goods/services you provide. The USPTO examining attorney will use this to compare your proposed trademark to other trademark registrations. This is how they identify if there are any potential conflicts or trademark infringement issues.

USPTO Comparison Situations

One of the duties of the USPTO examiner is to determine if your trademark conflicts with another existing trademark. For example, is your logo nearly identical to your competitor's logo? Providers of similar services may have similar logos. But, the USPTO examiner's job is to ensure that no two trademarks are the same.

Two factors the examiner will consider when determining whether your trademark is unique and necessary include:

1. Use in commerce: You must already be using the trademark in commerce or in connection with all the goods or services you submit.
2. Intent to use: You must have a bona fide intention to use the mark in commerce or in connection with your goods or services.

The USPTO will also consider the kind of business you own. If an elevator repair company and a children's snack company have similar trademarks, it will be clearer than a situation with two rival companies. The more similar the types of businesses, the greater the potential for confusion and infringement.

Ways to Identify Your Type of Business

You can submit supporting documents with your trademark application. For example, you may want to submit proof that you are in the health care market. You can also provide copies of your income tax returns, business tax records, and your employer identification number/ID number. You can contact the Internal Revenue Service (IRS) directly if you need this information.

This information will help confirm the kind of business you're involved in. You may also have documentation from the small business administration showing the type of work you do.

Specify Goods and Services

When specifying the goods and services, use clear and concise terms. You want to use language that the general public understands. Remember that the USPTO will deny your application if you fail to list any recognizable goods or services on your application.

The terms in the USPTO's International Schedule of Classes of Goods and Services are generally too broad, and you should not use them as identifiers. Likewise, an international class number alone is never an acceptable listing.

You can also consult the North American Industry Classification System to help choose a category for your business. This guide offers NAICS codes you can use to describe your goods and services on the application.

For acceptable wording for goods and services, see the USPTO's "Acceptable Identification of Goods and Services Manual." The wording is crucial, so you should talk to a skilled attorney before submitting your application.

Can I Change the Goods or Services After Filing my Application?

It's challenging to change your description once you file your application. You can clarify or limit the goods or services. But you can't file an amendment to change your description. This is why you must get it right the first time.

Always correctly spell, space, punctuate, hyphenate, design, and color any materials you submit. If your trademark isn't correct, you may not get the protection you seek. Procurement of a registered trademark is essential to your business. It will secure the intellectual property rights you need to protect your bottom line.

Get Legal Advice on Your Trademark Application

Trademark applications take time and effort. You must be as thorough and precise as possible. Hiring a business and commercial law attorney specializing in trademark law is a significant first step. A trademark attorney can help you file out the application, search databases, and more. Don't wait until the federal agency denies your application.

More Resources

• Intake Form: Meeting With an Attorney to Trademark a Business Name
• Registering for a Domain Name Trademark: What You Should Know
• Trademark Protection By Use or By Registration