Identification of Goods and Services in Trademark Applications: Key Considerations

Correctly identifying the goods and services that a trademark applicant intends to associate with any proposed mark is critical. While it seems like a straightforward process, it is not. It calls for significant thought to determine what should and should not be included in the identification. How broad should the identification be? How many classes should be pursued? Do identifications impact the ability to pursue other forms of IP, such as design patents or copyrights? What are the potential implications of what is involved when also filing foreign applications and seeking to enforce trademark rights globally? How do the new character-based fees potentially impact this analysis?

Further, counsel should pay special attention to drafting the identification because once the trademark application is filed, goods and services can no longer be added.

Of note, the UPSTO is cracking down on the intent-to-use and use in trademarks to combat fraud. What is included in the identification may make it more likely that the mark owner would be audited. Because such audits could undermine a company's enforcement of its mark, trademark counsel should carefully consider what to include in the identification of goods and services.

Listen as our authoritative panel reviews the requirements and then focuses on how much to include in the identification of goods and services and the considerations applicants should keep in mind. The panel will also outline obstacles to registration. The panel will discuss the Trademark Office's focus on cracking down on intent-to-use and use and the interplay of those audits with the identification of goods and services. The panel will offer best practices for crafting the identification of goods and services in trademark applications.