United States Trademark identification of Goods and Services

August 26, 2008

By Shi Li, Unitalen Attorneys at Law

Foreword With the rapid growth of products, made in China, export to United States, more and more Chinese domestic manufactures look forward to obtaining the trademark protection in US jurisdiction. Frankly speaking, U.S. Trademark protection system is the most advanced in the world and it has formed its own unique system. The U.S. trademark identification of Goods and Services also has unique characteristics. Hence, analyzing the features of the United States Trademark identification of Goods and Services is the core to overcoming problems when dealing with US Trademark applications. This paper focus on analyzing the features of US Acceptable Identification of Goods and Services Manual (ID Manual) and issues related, how to avoid the common mistakes which trigger the Official Action, issued by United States Patent and Trademark Office (USPTO), and facilitating domestic applicants and IP colleagues in order to find the most cost-efficient approaches to obtain the United States Trademark Protection.

Differences from NICE classification To most domestic applicants, the alphabetical list of goods and services appearing in the International Classification of Goods and Services for the Purposes of the Registrations of Mark under the Nice Agreement (NICE classification), Published by WIPO in Geneva, Switzerland is the handbook and guideline. However, dealing with a United States Trademark application, this document does not provide the applicant with complete and appropriate identification, which is generally too broad and should not be used alone as identification, but merely provide a useful suggestion and information for phrasing the proper identification.

For the applicant, the US Acceptable Identification of Goods and Services Manual (AKA, ID Manual), which is online and downloadable at http://tess2.uspto.gov/net/netahtml/tidm.html. This manual is really handy in drafting or choosing an identification of goods and services.

On January 1, 2007, the US Acceptable Identification of Goods and Services Manual has been updated to reflect the implementation of the 9th edition of the NICE Agreement. Upon checking the Trademark Certificate of Registration issued by USPTO, you can easily locate not only the International Class Code, but also the Prior U.S. Class Code printed on the documents. It should be kept in mind that the U.S goods and services classification is slightly different from the NICE Classification.

For example, “Nutritive substances” belongs to class 05 in international classification; however, some terms, such as “Nutritional oils for food purposes” (class 29) according to USPTO international classification. It is quite different from China or some continental countries trademark application regulations. In the US it is common law practice, when an applicant applies a trademark registration, they should present evidence of use within the US jurisdiction. To be precise, pursuant to the US Trademark Application Regulations, a specimen showing how the mark is used in commerce or in connection with the goods and services must establish an application based on the use of a trademark. The specimen of use must be filed between the fifth and sixth anniversary of the registration date. The applicant may lose their registration if they are unable to prove that it has been using the mark at least as early as the date of first use stated in the application.

Public accessible and flexible It is indicated that the broad identification, such as “accessories”, “apparatus”, “components”, “devices”, “equipment’, “machines”, “materials”, “parts”, “systems” or “products”, these words will not be accepted by USPTO, unless followed by “namely” and a list of the specific goods or services identified by their common commercial name. However, USPTO began to accept the above-mentioned words combined with other terms, which have not been accepted in the past. For instance, “Computer peripheral device” has been accepted since November 2007; “Surgical apparatus and instruments for medical, dental or veterinary use” was accepted on March 2008 by USPTO. Furthermore, The ID Manual is basically updated each week. Any applicant or attorney may make suggestions of proposed identification to be accepted and included in the ID Manual via email to USPTO.

Tips When specifying the goods and/or services, applicants should use clear, concise terms, i.e., common commercial names and language that the general public easily understands. Technically, common sense (or commonly understood language, common commercial names for the goods and services where possible) should indicate when language that does not appear in the ID Manual is acceptable.

In other words, the applicant should amend the identification to specify the common commercial name of the goods and services. If there is no common commercial name, the applicant must describe the goods or services and its intend use. However, to identify the term using “common language” is still a puzzling question. To domestic applicants, living in a non-English speaking environment, it is not an easy job to select the right terms to describe the identification of goods and services, especially when dealing with brand new technological terms, national feature products, or foreign terms.

Since the USPTO trademark database is freely accessible to the general public, anyone who has Internet access may easily search all the information uploaded by USPTO. If the applicants use the database well, the result will be rewarding. To be precise, heavy industry enterprises could research the well-known trademarks, such as “Mitsubishi”, “Komatsu”; the auto enterprises may research the trademarks, such as “BMW”, “SABB”, “NISSON’; the software corporations, which are major in online games, may check the trademark “WOW (World of Warcraft)”; the traditional Chinese medicine Manufacturers could refer to the ”TONG REN TANG” trademark database, and check all those enterprises on how to describe related goods or services.

By analyzing the abovementioned foreign trademarks, the domestic applicants will not only obtain a guideline on the identification of goods and services, but also learn how to plan their trademark strategy elsewhere. How to draft an identification of Goods and services Generally speaking, the trademark identification determines the scope of the trademark rights covered by the registration and it is necessary for the USPTO to evaluate the application for substantive compliance with the applicable rules. Common mistakes lead to Official Action If the identification of goods or services does not satisfy the USPTO requirement, the USPTO will deny a filing date to the application for failure to specify recognizable goods or service and issue an Official Action. The Official Action is a written document issued by the USPTO examining attorney assigned to the application that identifies issues relating to the application. The identification requirement always raises an Official Action. For a better understanding, the Official Action equals the objection issued by SIPO (State Intellectual Property Office of P. R. C).

While the identification of items may be amended to clarify or limit the goods, adding to the items or broadening the scope of the items is not permitted. Therefore, the applicant may not amend the identification to include items that are not within the scope of the items. Furthermore, if the applicant fails to respond, the Official Action regarding the identification issue, the “problem” goods or services will be deleted from the application. Facts and examples will help us in bettering our understanding of the issue. Broad identification The applicant should always keep in mind do not draft the broadest identification.

Some countries, such as Argentina and Iraq accept the title of an international class (Trademark full class protection), e.g., “advertising and business” (Class 35). In US trademark application circumstances, such identification is generally insufficient; the USPTO examining attorney may accept the precise specification after narrowing the identification. The applicant should acknowledge the following terms, which are inherently indefinite and should avoid; “such as”; “including”; “comprising”; “ and the like”; “ similar goods”; “ concepts”; “ device”; “apparatus”; “products”; “ accessories”; It is advised that following terms should be used in identifying the goods or services. “namely”; “ in the field of ”;“ consisting of’; “ for the purpose of”. Followings are some case studies:

1. Recorded computer software USPTO examining attorney suggestion: Recorded computer software, namely, computer anti-virus software and computer software for creating searchable database of information and data.

2. Computer programs (downloadable software) USPTO examining attorney suggestion: Downloadable computer software and computer programs, namely, computer anti-virus software and computer software for creating searchable database of information and data.

3. Equipment for communication network USPTO examining attorney suggestion: Equipment for communication network, namely, computer network hubs, switches and routers

4. Books and magazines USPTO examining attorney suggestion: Books and magazines featuring educational information for primary school-age children; OR Books and magazines featuring educational information for use by teachers in developing lesson plans.

5. Air conditioning device USPTO examining attorney suggestion: Air conditioning devices namely, air conditioners, air conditions for vehicles, air conditioning units. As stated before, the USPTO trademark-examining attorneys’ do not accept the broad identification of goods and services. Parentheses; Brackets, Generally, parentheses and brackets should not be used in identifications. Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., obi (Japanese sash).

Therefore, the applicant must remove the parentheses from the identification of goods and incorporate the parenthetical information into the description. Examples are following: Wrong Identifications (NICE International identification): USPTO Acceptable Identifications: Pans (Frying) Frying pans. Garments, Textile lining for Textile lining for Garments Socket sets (Hand tools, namely) Hand tools, namely socket sets Identification cards, Preparation of Preparation of identification cards. False Statement of Specimen The U.S. trademark statute requires the applicant or his attorney to submit with the application, a sworn statement (if necessary) that the applicant is using the mark or has a bona fide intent to use the mark in U.S. commerce with or in connection with ALL of the goods and or services identified in the application as of the date the application is filed. An acceptable mark specimen must show the mark as it is actually used in the sale or advertising of the any of service in EACH CLASS recited in the application. The application cannot and should not identify any goods or services with which the mark is not being used for, or which there is no intent to use the mark in U.S. commerce. False statements or misrepresentations concerning use of the mark with any of goods and services identified in the application is tantamount to fraud and the Trademark Office has adopted a strict rule of fraud. One American colleague once advised me, “Any false statement concerning the use of the mark with any of the goods is a material misrepresentation of fact for which there are costly ramifications. Specifically, the resulting registration would become vulnerable to attack in an adversarial proceeding, namely, opposition and cancellation proceedings. False statements regarding the goods or services cannot be cured by later amendment -- apparently even if the amendment is sought before an adversary makes a claim of fraud. The result may not only be a loss of the registration, but possibly other ramifications should the mark become involved in litigation.

The conduct, which filing the false statements to USPTO would put applicants or his representatives into jeopardy.” Importunely, there are a few Chinese domestic applicants ignoring the risk stated above, filing the fake specimen of use with the application supporting files on the actual use filing basis. Consequently, if the applicant fails to meet the requirement and the amendment, the applicant will then need to file a new application (with a separate fee, of course), thereby losing any priority associated with the earlier filing date of the initial application. The author’s suggestion is, like testifying on the courtroom, should tell the truth, the whole truth and nothing but the truth. Legally speaking, any amount of bona fide commercial use can lead to the grant of protection. Where an applicant has no documentation of his plans to use the mark on the claimed goods or services, it is a wise move that providing written confirmation and documented evidence that, currently using the proposed mark with all of the proposed services in U.S. commerce. If there are any identification of goods and services, which the applicant client is not using the mark or does not have a bona fide intent to use the mark, it is strongly recommend that the applicant do not include those services in the application. For those items with which the applicant is not yet using the mark, but has a bona fide intent to use it in the U.S., it is recommended that the applicant file an ITU application. Furthermore, before the applicant files the application or after obtaining the certificate of Trademark Registration, it is recommended that the applicant keep the evidence of use (specimens), such as newspaper and magazine advertisements, brochures, billboards, handbills, and direct-mail leaflets, etc. Business documents such as letterheads and invoices may be acceptable service mark specimens if they show the mark and refer to the relevant goods or services.

All in all, the core issue of domestic applicants should acknowledge that there are huge differences between the US and Chinese trademark regulations. The domestic applicant should learn how to “switch the channel” when handling the US trademark application, as it is almost impossible to obtain a full class, from Class 01 to Class 45, Trademark Certificate of Registration in U.S. Finally, the author assumes that the rules and ideas addressed in the article apply to the countries such as: South Korea, Canada and Thailand, which have harsh rules of identification of goods and services.

References: Evan Kent Auberry, James C. Simmons, Elizabeth H. Wang. Preparing U.S. Trademark Applications Avoiding Common Mistake THIRD EDITION, International Trademark Association New York, New York 2002. Greenberg Traug, LLP, U.S. Trademark Registration Process Explained, www.gtlaw.com September 2005. Globe Business Publishing Ltd, World Trademark Review Yearbook 2008, New Hibernia House, Winchester Walk London Bridge, United Kingdom. USPTO Official Website