How to File a Trademark – Part 6

By Drew Stevens - November 20, 2018 - Technology & IP

If you’re still on a quest to learn intellectual property and understand how to file a trademark, welcome to part six of our Columbus, Ohio intellectual property law firm’s tips and tricks on filing a trademark application. We’ve been working through filling out a hypothetical TEAS reduced fee application with the United States Patent and Trademark Office, last covering application types and specimens. In this edition, we’ll cover the all-important goods and services description.

Page 4 and Page 5: Goods and Services Description

We’ve arrived at one of the most important parts of filing a good trademark application – the goods and services description. The goods and services description will provide the scope of your trademark – what is and is not covered by your trademark. Essentially, you’ll be doing a balancing act. You generally want your goods and services description to be as broad as is justifiable; you don’t want to excessively narrow your description and leave out some of your company’s or startup’s key services or products.

This said, submitting an overly broad description of your goods and services description will likely result in an office action being issued and could even result in issues being raised by other trademark holders or companies with pending applications. In writing your goods and services description, be sure to review some of the relevant sections of the Trademark Manual of Examining Procedure. For example, TMEP section 1402.01 specifies that “The identification of goods and/or services must be specific, definite, clear, accurate, and concise.” Further, “The language used to describe goods and/or services should be understandable to the average person and should not require an in-depth knowledge of the relevant field.”

Searching ID Manual or Entering Free-form text

On page four of the TEAS RF application, you’re presented with two options: “Searching ID Manual” or “Entering Free-form text.” If you’ve never filed a trademark application, searching the ID Manual may be helpful. Say you’re a technology company, and you punch in “software.” Your results will show you many software services and products and their corresponding international class.

If you’ve already spent time researching what international class or classes you want to file in, and you’re comfortable with your goods and services description, click “Entering Free-form text.” You’ll be prompted to insert your description and select your class.

Section 1(a), Section 1(b), Section 44(d), and Section 44(e)

After you’ve entered your goods and services description, you’ll find four options for your filing basis. Section 1(a) and section 1(b) are for first time applications. With the 1(a) application, you must show proof that you’re using your mark at the time of filing. Using your mark means you are generally holding the mark out to the general public and using it in commerce.

A section 1(b) application can be handy for essentially reserving a mark. Section 1(b) is “intent to use” – you’re not actually using the mark in commerce yet. Section 1(b) applications require more follow up and additional filings than the section 1(a) and can be more expensive over the long run.

If you’re a company or startup that has filed a trademark application in another country or already have a registered a trademark in another county, section 44(d) or section 44(e) may be a better option. Section 44(d) basis applies if you file the U.S. application within six month of the application in your original county and the goods and services are the same in both applications. If you already have a registered trademark, you can use your trademark certificate at any time for 44(e) basis. One of our international lawyers can provide more information on using your foreign trademarks.

In closing, do not rush this step. Take your time in crafting your goods and services description. If you feel that you need the assistance of a Columbus intellectual property law attorney, let us know how we can help you.

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