Selection of Associated Goods/Services Descriptions for U.S. Trademark Applications
Many applicants for U.S. trademark registrations, especially foreign applicants, prepare listings of associated products (“goods”) and/or services under a given trademark that are either not acceptable under U.S. trademark laws or are undesirable for several reasons. Even when such listings are acceptable under the U.S. trademark laws, there are disadvantages associated with specifying products and/or services in certain ways that can increase the cost of the trademark application and can even jeopardize the validity of the registration at a later time.
The U.S. trademark registry (like that for many countries) is classified in 45 international classes of products and services by subject matter:
http://tess2.uspto.gov/tmdb/tmep/1400.htm#_T140102 – U.S. international classification rule
http://tess2.uspto.gov/netahtml/manual.html – U.S. Goods/Services manual (browse format)
http://tess2.uspto.gov/netahtml/tidm.html – U.S. Goods/Services manual (search format)
Each trademark classification (or “class”) includes a “heading,” or a broad general description of the categories of products or services covered by that particular class. U.S. trademark applicants are required to specify in an explicit manner the particular goods or services within a given trademark class with which the trademark will be associated (see http://tess2.uspto.gov/tmdb/tmep/1400.htm#_T1402). This requires a somewhat detailed listing of each type of product and/or service offered for sale under the trademark. However, in some foreign countries, especially South American countries, use of the much broader international classification headings is permitted for listings of associated products and services in trademark applications. For this reason, descriptions that are acceptable in foreign countries (especially those from foreign applicants) need to be changed (to be more specific) to conform to U.S. requirements. Applicants who prepare a more detailed listing of this type in advance of filing their U.S. applications are likely to save costs because the more detailed descriptions are less likely to result in an Examining Attorney’s objection at the Trademark Office.
However, many trademark applicants, in an effort to ensure that they cover all relevant products and/or services, prepare a long, exhaustive, listing of their products and/or services. Commonly, such a listing will include the primary products and/or services offered for sale by the applicant, which often fall within only one or two trademark classes. Oftentimes, though, the effort toward providing a more complete and detailed listing results in the inclusion of ancillary and associated products in the nature of accessories, attachments and other items. These items often do not fall within the same trademark classification(s) as the primary products or services and are often not necessary to ensure adequate coverage for the registration. Inclusion of such additional items tends to increase overall trademark costs in the following ways: (1) it can require several additional trademark classes to be included in the application for covering non-primary products, at additional cost per class; (2) it can result in Examining Attorney inquiries where the nature of the products/services are unclear, resulting in the need for consultation with the Examining Attorney and amendment of the application after filing; and (3) it can result in Examining Attorney objections due to improper classification of some of the products/services, resulting in the need to resolve the objections with the Examining Attorney by consultation and/or amendment of the application after filing.
In addition, trademark registrations having long listings of associated products or services can incur additional risk of invalidation upon the submission of required supporting renewal or Declaration filings. Sometimes, over the course of a trademark registration’s life, changes occur in the products or services with which a trademark is being used. Associated products and services descriptions for issued U.S. trademark registrations cannot be supplemented to include new products or services (an entirely new application would be required) after a registration issues. However, U.S. trademark laws do require registrants to delete outdated portions of their associated products and services descriptions at the time of filing required supporting Declarations of Use (once, between five and six years after registration) and renewal applications (every ten years) for maintaining their issued U.S. registrations.
Recently, a number of holdings have caused the need for increased scrutiny toward maintaining accurate products/services descriptions in U.S. trademark registrations. In Medinol Ltd. v. Neuro Vasx, 67 USPQ2d 1205 (TTAB 2003), the U.S. Trademark Trial & Appeal Board (“TTAB”) found fraud on the part of a trademark owner for filing a Declaration claiming use of a trademark in connection with more products than were actually used, resulting in cancellation of the entire registration. Since that time, the TTAB has modified this rule for multi-class registrations to only invalidate a registration as to classes where fraud is found, as opposed to all classes in the registration (see G&W Laboratories, Inc. v. GW Pharma Limited, 89 USPQ2d 1571 (TTAB 2009)).
As a result of these holdings, it is important for trademark owners to scrutinize their registrations during Declaration and renewal activities to ensure that product and services descriptions do not include outdated items. Accordingly, where a registration includes very long descriptions for those products and services, the registrant may have created unnecessary burdens, costs and risks associated with the review and maintenance of that registration at the time of subsequent maintenance activities. For these reasons, a more practical approach for listing associated products and services at the time of application filing might focus on only primary associated products and services.