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:
- The service is a real activity, not an idea, concept, process, or system.
- The service is performed primarily for the benefit of someone other than the applicant.
- A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.
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