Part 3: Overbroad Goods and Services Descriptions
United States trademark law is unique and different compared to trademark law in foreign countries and what may seem like common sense. Whether an individual is new to the area of trademark law as a whole, or a foreigner is thinking about filing a U.S. Federal Trademark Application, these common mistakes can be fatal and/or costly to any trademark application.
In Part 3, we look at applicants who use overly broad descriptions of goods and services, whether purposefully or inadvertently, with their federal trademark application.
(4) Use of Overly Broad Descriptions of Goods and Services
One of the more common obstacles in our six part series is the use of an overly broad description of goods and services identified in a federal trademark registration. This typically occurs as applicants attempt to gain a broader scope of protection for their trademark. However, an overly broad description can lead to a refusal of a trademark application or even the cancellation of a trademark registration.
At the initiation of a federal trademark application, the applicant must either be currently using, or have the bona fide intent to use the applied for mark in commerce on all listed goods and services contained in their application. In other words, if a trademark application is based on actual use, then the applicant must be using the mark with all listed goods and services as of the date of filing the application. In the alternative, when filing an application based on intent to use, an applicant must commence using the trademark on all goods and services listed in their application as of the date of filing a statement of use, but must have the bona fide intent to use the mark at the date of filing.
The bona fide intent to use requirement must exist at all times, from the initiation of a federal trademark application, through the registration process, before the six year anniversary of the issuance of a registration certificate and with each ten year renewal of the trademark registration. Absence of this requirement will act as a gateway for third parties to attack the validity of the trademark. While it may be challenging to attack a trademark based on this theory, there have been instances whereby absence has been proven. Typically this occurs whereby a challenger reveals a business’s marketing and development materials, and none of these documents indicate there was ever any intention to offer for sale the goods and services listed in connection with the trademark registration.
Another issue with a broad description is it dramatically increases the likelihood that an examining attorney will issue an office action refusing the trademark. The USPTO requires that the identification of goods and services be specific, definite, clear, accurate and concise. This allows the examining attorney to properly classify the goods and services and conduct a proper likelihood of confusion analysis. Thus, as applicants attempt to broaden their trademark protection by filing applications with broad descriptions of goods and service, having them frequently leads to issues that make the trademark registration process costly and sometimes fatal.
Obtaining a trademark attorney to identify the proper trademark classification an applicant’s goods and services fall under, as well as drafting the description will help prevent this common pitfall, while maximizing the protection afforded to a trademark.