The significance of the description of goods and/or services in a trademark application with the USPTO is often overlooked. The descriptive must be accurate. It must not be overly broad. For best protection, it must be thorough and comprehensive.
The placement of punctuation such as commas and semi-colons can change the scope of protection in the trademark application/registration.
A choice between seemingly similar wording can make a giant difference – and can even at times be the difference between obtaining a registration and being denied (and the USPTO does not refund the filing fees). If the description cannot be amended, and if the description does not match the evidence from the applicant in terms of what products are services the mark is used in connection with, the application may be impossible to fix.
A company in the coffee business could potentially choose any one or more of the following descriptions to include in their application (all are from the “Trademark Acceptable Identification of Goods & Services” database):
- Coffee roasters (Class 11)
- Coffee cups (Class 21)
- Beverages made of coffee (Class 30)
- Coffee (Class 30)
- Coffee beans (Class 30)
- Coffee roasting and processing (Class 40)
- Coffee shops (Class 43)
- Cafe services (Class 43)
If an applicant who makes coffee roasting machines (Class 11) indicates in its application “coffee roasting and processing” (Class 40) which is a service performed for others, as indicated by the Class number, the applicant would not be capable of showing that it performs the coffee roasting services. And their application would likely be moot, and the filing date and filing fee would be lost. And their the brand for their coffee roasting machines would not be protected by the USPTO yet.
This is but one small example of the significant of a proper description of goods and services!
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