Identification of Goods and Services

A trademark application identifies the specific goods and services that the trademark owner will be using the trademark in connection with. This is referred to as the identification of goods and services. It is an essential aspect of trademark registration, as it defines the scope of protection of the trademark and helps to avoid confusion with similar trademarks. The identification of goods and services must be clear, precise, and consistent with how the trademark is actually being used in commerce. It is important to choose the correct category and specific goods or services when filing a trademark application, as the trademark office will consider this information when examining the application. When choosing the goods or services to be included in the identification, it is important to consider the commercial realities of the business, including the products or services currently offered, as well as those that may be offered in the future. A well-crafted identification of goods and services will provide the broadest possible scope of protection for the trademark. All trademarks need to be tied to goods and/or services. It is not possible to register a trademark that is not associated with any goods or services. In fact, it is possible for two completely different companies to use the exact same trademark for different goods and services. For example, think of Delta Airlines and Delta Faucet, which are different companies that coexist—both use the word “Delta” but for very different goods and services.  Think about your “identification of goods and services” 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 have goods. If it’s activities, you have services. Goods are things that bear your trademark. Services are activities that you perform for others. Although the determination of whether you have goods or services can be confusing, it’s critical that you make the correct identification. Also, the identification of goods and services should not indicate a “manner of use.” That is, the ID should not indicate how you intend to market your goods and services. So, unless you actually sell goods to other people (like clothing or business cards) or provide actual services for other people (like advertising or accounting), do not list those. Your ID should specify either the actual goods upon which your mark is used or the actual services with which your mark is used. The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services: One of the Trademark rules restricts amendments to the identification of goods or services. You may delete goods and/or services from the application and you may clarify or limit goods and/or services. But, you may not expand or broaden goods and/or services. You cannot amend an identification of goods/services to add or substitute a term that is beyond the scope of the goods and services as originally identified. The public relies on the USPTO database of trademarks to see what trademarks have been applied for before selecting a trademark for their business, so federal law does not allow you to broaden the description after you file your application. If you initially listed “shirts” as your goods in the application, you could later limit these to specific types of shirts, such as “t-shirts and polo shirts.” You may not later change “shirts” to “pants.” Example #1 If your goods were “dentist services,” you may not amend to “medical services,” because the amendment would expand the identification to include services beyond the scope of those identified initially. Example #2

What is a “Title of a single creative work” refusal?

Your trademark won’t register if it’s only used as the title of a single creative work. However, if your trademark is the name or title of a series of creative works, it may register. You need to provide evidence that shows the title is being used for the entire series, not just one creative work in the series. For example, the book title “The Tipping Point” identifies a single book and the film title “The Manchurian Candidate” identifies a single movie. However, C.S. Lewis’ “The Chronicles of Narnia” books, National Public Radio’s “All Things Considered” radio programs, and “The Twilight Saga” films are each a series because they identify more than one creative work under that name.  Similarly, your trademark won’t register if it’s only used as a portion of a title of a single creative work. For example, the title portion “The Magic School Bus” that’s in the book title “The Magic School Bus: Going on a Field Trip”  is considered a portion of a title. But, a portion of a title of a single creative work may be registerable if the name of a portion of a title: A single creative work is one, individual work in which the content does not change significantly, whether that work is in printed, recorded, or electronic form, or provided live on stage or in a live performance.  Examples: Generally, a series of creative works is a type of work in which the content changes significantly with each edition, issue, or performance.  Examples: Provide evidence to show that your trademark is being used as the name, title, or title portion for a series of creative works. Evidence typically consists of photographs, screen printouts or captures, point-of-sale displays, download links, and advertising.  There are several possible response options to overcome the refusal. Not all options may be applicable to your specific situation. Review your office action carefully to determine which, if any, of these options may apply.

What is a “Name of an Artist” Refusal?

A “name of an artist” trademark refusal occurs when a trademark application is denied because the name being applied for is primarily the name of an artist, and not capable of serving as a trademark. In order to overcome a “name of an artist” trademark refusal, the applicant may have to prove that the name has acquired a secondary meaning, or is otherwise distinctive enough to function as a trademark. This can be done by submitting evidence of substantial use and recognition of the name as a trademark. Alternatively, the applicant may change the mark to include additional wording or design elements that make it more distinctive.

“Principal” and “Supplemental” Registers

The Principal Register is a listing of trademarks maintained by the United States Patent and Trademark Office (USPTO). Trademarks are granted a listing on the Principal Register if they are considered to be distinctive and capable of identifying the source of the goods or services associated with the trademark. The Principal Register provides the strongest legal protection for trademark owners and offers a number of benefits over the Supplemental Register. Some of the key benefits of the Principal Register include: On the other hand, the Supplemental Register is a secondary register for trademarks with the USPTO and is intended for trademarks that are not eligible for the Principal Register, but still deserve some level of protection. Trademarks on the Supplemental Register do not receive the same legal benefits as trademarks on the Principal Register and are not entitled to use the ® symbol. However, they can still provide some protection against infringement and can lead to registration on the Principal Register if the trademark becomes distinctive over time. The Supplemental Register is a secondary trademark register maintained by the United States Patent and Trademark Office (USPTO). This register is intended for marks that cannot meet the requirements for the Principal Register, but still provide some trademark protection. To be eligible for the Supplemental Register, a mark must not be capable of serving as a trademark on the Principal Register. This means that the mark is not inherently distinctive or has not acquired distinctiveness through secondary meaning. Some examples of marks that may be eligible for the Supplemental Register include descriptive marks, surnames, and geographic names that have not acquired secondary meaning. Once a mark is placed on the Supplemental Register, the trademark owner may use the ® symbol, indicating that the mark is protected under federal trademark law. Additionally, the mark may become eligible for inclusion on the Principal Register if the trademark owner can demonstrate that the mark has acquired secondary meaning through use over time. It is important to note that while the Supplemental Register provides some level of protection, it is not as comprehensive as the protection provided by the Principal Register. As such, trademark owners who are looking for comprehensive protection should strive to have their marks placed on the Principal Register.

When do I need to file a trademark renewal?

A trademark renewal is the process of maintaining and preserving a registered trademark. It is required to be filed within a certain period of time, usually every 10 years, to keep the trademark active and in force. Failure to file a trademark renewal can result in the cancellation of the trademark registration. The specific time frame for filing a trademark renewal varies by jurisdiction, but it is typically between the 9th and 10th year after the initial registration. In some cases, a trademark owner may be required to file a renewal every 5 years. It is important to keep track of the renewal deadlines and to take the necessary steps to renew the trademark registration to maintain its full legal protection.

What is the chance of overcoming the refusals in an Office Action?

A trademark office action is an official notification from the United States Patent and Trademark Office (USPTO) that states the reasons why your trademark application has been refused registration. Receiving an office action can be a frustrating and confusing experience, but it’s important to understand that it is a common step in the trademark registration process. The chance of overcoming the refusals in an office action depends on several factors, such as the strength of your trademark, the similarity of your trademark to other existing trademarks, and the quality of your response to the office action. A well-prepared and persuasive response, that addresses the USPTO’s concerns and provides additional evidence to support your trademark application, can increase your chances of overcoming the refusals and getting your trademark registered. It’s important to remember that the trademark registration process is complex and can take several months or even years to complete. Hiring an experienced trademark attorney can greatly increase your chances of success and help ensure that your trademark application is handled efficiently and effectively. An attorney can help you prepare a compelling response to the office action, provide valuable advice and guidance, and represent you in any legal proceedings that may arise during the trademark registration process. In conclusion, the chance of overcoming the refusals in an office action varies depending on the specific circumstances of your case. However, with a strong trademark, a well-prepared response, and the help of an experienced trademark attorney, you can increase your chances of getting your trademark registered.

What are the benefits of using an attorney to file your trademark application?

Filing a trademark application can be a complex process, and using an attorney can provide several benefits. Here are a few reasons why using an attorney can be beneficial when filing a trademark application: In conclusion, using an attorney to file a trademark application can provide several benefits, including improved chances of success, time-saving, and strategic advice. An attorney can also provide representation in case of disputes and help you navigate the complex process of obtaining a trademark registration.

What is an Ornamental Specimen Refusal?

A “ornamental specimen” refusal is a type of “Specimen” refusal issued by the United States Patent and Trademark Office (USPTO) when a trademark applicant provides a specimen of use of their mark that does not show how the mark is actually used on the goods or services offered for sale. This can occur when the trademark is being used as a decorative feature on the goods, rather than as a source identifier for the goods. In order for a trademark to be registered, it must be used in a manner that is distinctive, meaning that it serves to identify the goods or services offered by a particular source. If the trademark is used merely as an ornament, it may not serve to identify the source of the goods and may not be registrable. If an applicant receives an ornamental specimen refusal, they will need to provide a new specimen of use that clearly demonstrates how the mark is used in a manner that is source-identifying. This may involve changing the appearance of the mark on the goods or services, or changing the way the goods or services are marketed to consumers. Clothing In the case of clothing, a specimen should clearly show the design in use as a trademark, such as by including it prominently on the clothing label or tag, or by including it on advertising or packaging materials. If the applicant is unable to provide sufficient evidence of the design’s source-indicating function, the application may be abandoned or the design may need to be modified to be eligible for trademark protection.

What is a “Specimen”?

A “specimen” in the context of trademark law refers to a sample of the way a trademark is being used in commerce. A specimen is required to be submitted along with a trademark application to demonstrate to the trademark office (such as the USPTO) that the mark is actually being used in commerce in connection with the goods or services listed in the application. The specimen helps the trademark office determine whether the trademark satisfies the requirements for use in commerce and is eligible for registration. Common examples of specimens include website screenshots, product labels, or advertising materials that show the trademark being used with the goods or services identified in the application. A “specimen” is real-life evidence of how you are actually using your trademark in the marketplace with the goods or services in your application. It’s what consumers see when they are considering whether to purchase the goods or services you provide in connection with your trademark.  The specimen must show the mark in connection with the goods or services you identified in the application. Correctly identifying your goods and services is one of the most critical aspects of your application and a failure to correctly list the goods and services with which you use the mark may prevent you from registering your mark. One of the Trademark rules restricts amendments to the identification of goods or services: you may not expand or broaden goods and/or services. If the identification is incorrect and needs to be updated, then a new application would be required (see option below).  An acceptable specimen must: Also remember, it is not enough to show how you might use a specimen in the marketplace. It may not be a digitally-altered image or photograph, computer illustration, artist’s rendering, printer’s proof, or similar mock-up that simply shows what the mark looks like. You must submit a photograph, screenshot, or similar representation of the actual thing.  Finally, a specimen is not the same thing as a drawing. A drawing shows what the mark is; a specimen shows how the mark is used.  Goods For goods, a specimen shows your trademark as actually used in commerce with your existing goods in a way that directly associates the trademark with the goods. For example, a specimen could be a photograph of the mark on the goods themselves, a label or tag attached to your goods that shows your trademark, a product container or packaging showing your trademark on the packaging, or a website displaying your trademark where your goods can be purchased or ordered. Remember that advertising brochures, business cards, invoices, and other internal and marketing materials are not acceptable specimens for goods. You must show the use of the mark on the goods themselves or on the labeling or packaging for the goods. Examples of specimens for goods include: For website specimens for goods, it must show the use of the mark directly associated with the goods and there must be of a point-of-sale nature. This means that this type of display specimen must include the following: Downloadable Software Specimens for downloadable software include instruction manuals or screen printouts from: Services For services, a specimen shows the trademark as actually used in commerce with your existing services in a way that directly associates the trademark with the services. Advertising and marketing materials are acceptable, so long as the mark is shown being used in the advertising or providing of the services and the specimen references those services. For example, a specimen could be an advertisement, brochure, website printout, or other promotional or marketing material which shows your trademark used for the services, business signs where the services are rendered showing your trademark, or a service vehicle showing your trademark. Many different types of materials are acceptable as specimens for services, as long as the specimen both shows the mark and references the provided services. Examples of specimens for services include:

What is a “Functional” Refusal?

A Section 2(e)(5) Functionality refusal is a rejection by the United States Patent and Trademark Office (USPTO) of a trademark application based on functionality. A trademark is considered functional if it describes an inherent feature of a product or service and is essential to its use or purpose. If a trademark is deemed functional, it cannot be trademarked because it would give the owner a monopoly on a feature that others should also be able to use. A functionality refusal can be based on either aesthetic functionality, where the design is functional and not merely ornamental, or utilitarian functionality, where the feature is essential to the use of the product. A trademark examiner may issue a Section 2(e)(5) Functionality refusal if they determine that the mark is functional and therefore cannot serve as a source identifier. To overcome a Section 2(e)(5) Functionality refusal, the applicant must provide evidence that the trademark is not functional and that it serves a source-identifying purpose. This may include arguments and evidence showing that the design is ornamental or that the feature is not essential to the use of the product. The applicant may also submit evidence of consumer recognition and secondary meaning, showing that the public associates the trademark with the applicant’s goods or services, rather than the product features. To overcome a Section 2(e)(5) Functionality refusal, you can take the following steps: It is recommended to seek the assistance of a trademark attorney to guide you in overcoming a Section 2(e)(5) Functionality refusal as the process can be complex and challenging.