Strategically Describe Your Goods & Services When Trademarking

A trademark can provide your brand with a unique identity in the market. You can trademark any element that allows your business to be distinguished from others such as a name, logo, or design. While drafting your trademark application, you are required to describe your goods and services. You need to exercise caution because the trademark registration depends on a variety of factors that can be tricky to understand. For example, using marks that are clearly descriptive of the goods and services has high chances of facing rejection. Hence, it is essential to strategically describe goods and services while drafting your trademark application.

Following are some tips to consider while describing your goods and services:

Broad but Accurate

When describing your goods and services, remember to be accurate. The goods and services need to be described in ordinary commercial terms. Providing a vague description is more likely to lead to a examiner's report or rejection of your trademark application. A clothing company can broadly describe their goods as shirts, but a software company must describe the types of software that they sell to properly describe their goods.

Narrow and Specific

While broad descriptions work in some situations, a more narrow and specific description may reduce the chances of confusion arising with another trademark registration or application. Most often it makes sense to describe goods and services specifically. Specific and narrow descriptions can decrease the chances of rejection based on confusion or similarity.

Clearly Descriptive & Generic Phrases

Clearly descriptive names or descriptions that clearly indicate the features of your goods and services will not be accepted as trademarks. For example, successfully registering SWEET for desserts or CLEAN for a dry cleaning service would be incredibly difficult, if not impossible. If the words used to describe the goods and services are also present in the trademark, there is a greater likelihood of objection or rejection of your trademark application.

Consider Pre-approved Descriptions

Using pre-approved terms that have been accepted by the Canadian Intellectual Property Office can enhance your chances of obtaining a trademark registration. You can refer to the CIPO’s Goods and Services Manual to assist you in the classification of goods and services.

Off Target Descriptions

Sometimes a trademark owner may not be able to cover its core goods and services in the description because a prior filing would object the application. Hence, you may describe your goods and services excluding those which may lead to conflict to register your trademark. This may allow you to register your trademark, but it will not prevent the party with the confusing trademark from claiming infringement of their rights.

You need to be smart when describing goods and services while drafting a trademark application. Drafting your trademark application can be a tricky process. A registered trademark agent can assist with the trademarking process.

Image Source: thebluediamondgallery.com