You Can't Change a Trademark Goods and Services Description

Once you’ve filed your federal trademark registration application, you’ve more or less cast it in stone.  There are some things that you can change while the application is being processed, but generally, the Patent and Trademark Office is resistant to you amending the application.  So, if you’re filing an application yourself, please be careful about its contents.

Everything in the application has to be accurate, obviously, but also think about whether it is complete.  If you sell forks, knives, and spoons with your trademark, put “forks, knives, and spoons” on your application, because if you just say “forks and spoons,” it is going to cause you a headache (and probably money) expanding that to all three items.  Best case scenario: the Trademark Examiner doesn’t see it is as an expansion but as an addition of something equivalent, and you get to make the change.  I don’t know about the worst case scenario (maybe filing expensive appeals/petitions), but a worse-case scenario is the Trademark Examiner thinks that adding knives to the fork-and-spoon description is an expansion of the product description, in which case you’ll be filing a new application (and paying another set of filing fees) for the mark just on knives.

Here’s another great example of how careful you need to be in the application, from Section 1402.06(b) of the Trademark Manual of Examining Procedure:

Example – If an applicant has erroneously identified its goods and services as “bottles for salad dressing” but, in fact, the applicant intends to register the mark for salad dressing, the applicant may not amend the identification to “salad dressing.” However, if an applicant identifies its goods and services as “bottles of salad dressing,” the applicant may amend the identification to “salad dressing.”

That simple preposition switch might mean you’re calling a trademark attorney to help figure out what to do with the squandered application. 

Similar Posts