The Importance of the Description of Goods and Services in a Trademark or Service Mark Application with the USPTO

There is a delicate balance a trademark applicant must achieve when filing for a trademark registration with the United States Patent and Trademark Office (USPTO).  On one hand, the description of goods/services must be broad enough to offer as much trademark protection as possible.  On the other hand, the description should not be so broad that it impairs the trademark applicant’s ability to distinguish its goods and services from that of another.  Case in point, the recent Trademark Trial and Appeal Board (TTAB) decision, as discussed here, held that the trademark application for the design plus words mark “17” as it pertained to various clothing items, including shirts related to the field of professional automobile racing, created a likelihood of confusion with the registered mark “SEVENTEEN” as it pertained to shirts.  The TTAB did not find the trademark applicant’s arguments regarding the difference between the kinds of consumers who would purchase the different shirts to be relevant.  Instead, the TTAB noted that “[e]xtrinsic evidence that may tend to limit the scope of registrant’s goods is essentially a collateral attack on the cited registration, which is not appropriate . . ..”

While the USPTO’s Acceptable Identification of Goods and Services Manual offers descriptions for goods and services, it may make sense for the trademark applicant to create its own description, especially where the two marks are to be registered in the same international class, in hopes of avoiding a section 2(d) likelihood of confusion refusal by the examining attorney at the USPTO.  Simply put, a broader description is likely better if you, as a trademark applicant, are the first to file for a trademark in a particular area.  Likewise, a trademark applicant that has identified a possibly problematic trademark registration should choose a description of goods or services knowing that its arguments in response to a likelihood of confusion refusal will be limited to that description.  Again, these are the types of issues that a trademark attorney can address.  For general information regarding the identification and classification of goods and services, see this section from the Trademark Manual of Examining Procedure.