11 Trademark Tips: how should I list products and services in my trademark application?

A trademark application cannot be filed for “everything”, as a “general brand” or to “prevent others from registering a similar trademark”. There is no such thing as an umbrella trademark that will cover everything under the sun. If you are an Amazon seller and don’t know what you are going to sell, you will need to go back to the drawing board and come up with a business plan for the next year or two. Once you know what products you will be selling, you can file a trademark application.

Both the U.S. Trademark Office and Canadian Trademark Office require trademark applicants to list and describe all products (and services) that are sold or plan to be sold when applying for a trademark registration.

To minimize the risk of getting an objection from the Trademark Office, below you will find easy tips for creating an acceptable list of goods and services. Of course, your trademark attorney or trademark agent will properly classify your products for the trademark filing but below tips are provided just to give you a general understanding of how trademark classification works.

  1. Be specific and avoid using full sentences

❌  I am offering pet sitting services

✔ Pet sitting services

❌ Various clothing

✔ Clothing, namely t-shirts, sweatshirts, caps, and hats

  1. Avoid including registered trademarks in the trademark descriptions

❌ Zumba fitness classes (ZUMBA is a registered trademark)

✔ Conducting fitness classes

❌ Cases for iPhones (iPhone is a registered trademark)

✔ Cell phone cases

  1. Avoid open-ended words (like “etc.”, “others”, “including”, “such as” and “various”)

❌ Elliptical exercises machines, exercise steppers, and other equipment

✔ Elliptical exercises machines, exercise steppers, exercise treadmills

❌ Kitchen utensils, etc.

✔ Kitchen utensils, namely kitchen tongs, basting spoons and spatulas

  1. Avoid being overly specific as this will unnecessarily limit you

❌ Massage services for elderly people who suffer from depression and insomnia

✔  Massage services

  1. Indicate field, industry or function where possible (especially applicable for software, videos, and consulting services)

❌  Computer software

✔ Computer software for word processing that may be downloaded from a global computer network (indicate the function)

❌ Downloadable videos

✔ Downloadable videos featuring music (indicate field)

  1. Classify products into appropriate classes and use government pick-list to qualify for the lowest filing fee

❌ Toys, cosmetics, toy chests

✔ Class 3: Cosmetics

Class 20: Toy Chests

Class 28: Toys; dolls

  1. If you are only selling one item, for example, “Silicone muffin baking liners”, do not add other items that you don’t sell yet and indicate that they are also in use. It is tempting to do so but may lead to a trademark audit and possibly even trademark invalidation.

❌  Silicone muffin baking liners; Cookware, namely, pots and pans; Pot lids; Pot cleaning brushes – based on the use

✔ Silicone muffin baking liners – based on use Cookware, namely, pots and pans; Pot lids; Pot cleaning brushes – based on “intent to use” (future use)

  1. Avoid including prohibited items like marijuana (in the US). This may lead to a trademark refusal.

 

  1. Avoid including misleading information like “organic creams” for creams that are not organic.

 

  1. Do not include products that you have no intention to sell.

 

Do not include “business cards”, “letterhead paper” and “uniforms” if they are not going to be sold to the public.

 

  1. Do not list services if their sole purpose is to promote your own business.

 

For example, list only services that you offer to others. You should only include “Advertising” if you are providing advertising services for others and not if you are only advertising your own business.

 

If in doubt, contact your trademark professional! We don’t charge for asking 😊

By |2018-04-13T19:40:22+00:00March 6th, 2018|Uncategorized|0 Comments

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Anita Mar
CEO and Registered Trademark Agent at Trademark Angel Inc.

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