Less is More

Every U.S. trademark registration includes a description of the stuff sold using the trademark. Some people think more is better. That’s not always true.

You’re covered for related stuff even if you don’t include it.

If you register COFFEE BEAN for:

Clothing, namely, shirts, pants, and skirts

no one’s going to be able to register or use COFFEE BEAN for coats, socks, hoodies, or belts, so don’t obsess over listing every single item of attire.

Your application is less likely to be successful.

Let’s say you sell a VISIONBOARD brand app for:

Downloadable software in the nature of a mobile application for tracking and reporting business expenses.

What if your app also exports reports to spreadsheets? Should you add that?

Downloadable software in the nature of a mobile application for tracking and reporting business expenses and exporting information as a spreadsheet.

You just took a pretty solid application and made it likely to be rejected. There’s an existing registration for VISIONBOARD for spreadsheet software. The examiner might see “software” and “spreadsheet” and decide to reject your application. If you had stuck with the accurate and more limited description, you wouldn’t have had a problem.

Sometimes being short and sweet is best.

My registration for BEELINE is for “legal services.” That’s it. I don’t mention my online platform or trademark law or anything else, because that would unnecessarily limit my rights. Sometimes the trademark offices requires you to be more specific and that’s fine, but don’t limit unless you have to.

Unnecessary expense.

Including more stuff can cost more money. The Trademark Office’s fees are based on the number of “International Classes.” If you’re selling a downloadable app (class 009) and there’s no SaaS version of the software (class 042) then don’t include that because it will cost more and it’s also not actually true.

Perjury doesn’t help.

When you file your application you affirm, under oath, that you’re using the trademark for the goods and services in the application. If you include stuff you aren’t selling, you’ve committed perjury and your trademark could be deregistered.

There’s an art to knowing when to limit and when to expand, knowing when to be specific and when to be broad. More is not always better.

 

bl_brandfooter

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Google photo

You are commenting using your Google account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s