What goods or services does your trademark protect? I am asked this question from those who are first time trademark filers‚ as wells as‚ successful entrepreneurs who have been in business for many years. The short general answer is whatever goods and/or services that were listed in your trademark application or amendments‚ assuming that you obtained trademark registration. According to the Trademark Trial and Appeal Board (“TTAB”) in a recent decision‚ the identification of goods and services in a trademark application “must be specific‚ definite‚ clear‚ accurate and concise” in order to obtain registration. As‚ an example‚ in that case‚ the TTAB confirmed the examining attorneys refusal to register the trademark based upon the applicant’s identification of goods as “activewear”. The TTAB determined that the term “activewear” was too broad and could encompass all types of clothing.
As a practical matter‚ when submitting your initial trademark application‚ the examining attorney will generally not refuse registration based upon an improper description and will allow you to amend your application to correct your description of goods. However‚ the bigger concern I have for our business clients is when they believe they are protected for certain goods or services and they are actually not. In fact‚ I find that most trademarks do not cover what the trademark owners believe they cover. For example‚ I recently reviewed the trademark portfolio of a fairly well known franchise company in the fitness industry. What I found was that the franchise company only had trademark protection for its fitness services and nothing else.
There were gaping holes in the true protection they need‚ including‚ protection for the franchise services they offer‚ protection for any apparel (branded shirts‚ hats‚ pants‚ etc.)‚ protection for any branded fitness equipment they utilize‚ protection for any ancillary marketing materials (key chains‚ water bottles‚ etc.)‚ among other goods and services they offer. It turns out that the business owner had no idea that these additional filings were required and thought that he was covered. In fact‚ he didn’t even think about it after he received registration.
Here are some tips to ensure that your trademark protection covers the goods and services it should:
- Go to www.uspto.gov and find your trademark registration information. On the registration‚ you will see a section “Goods and Services” and you will see all of the goods and/or services your trademark registration covers. You will also see numbers after “IC” which is the “International Class” of your goods and services. Review the list of goods and services and see if you offer any goods or services that are not listed. If you do‚ you probably need to supplement your trademark application.
- Sit back and think about any goods and services you anticipate offering within the next year. If you come up with anything‚ it is recommended that you file an “Intent to Use” application before actually using the trademark for that good or service.
- Look through your promotional and marketing materials to see if there is any branded items that you would like to obtain protection for.
- Repeat! You need to setup a system within your business to periodically monitor the goods or services that your trademark is protecting. As your business grows and changes‚ so will your trademark requirements.
Start now and stay vigilant! Properly protecting your brand is a process and you need to establish a system to monitor your marks to ensure your protection is proper.
LEARN MORE ABOUT PROTECTING YOUR BRAND
To learn more about trademarks and how they can protect your brand we recommend contacting our office by phone at 1.800.876.4904 or by email.