What do you sell?

June 25, 2021 | Written By Erin Darden

Erin Darden, Parlatore Law Group

Before registering your mark, you must identify the goods and or services you offer. When I ask clients this question, they often give me a long list of goods or services. After asking follow-up questions, we realize that most of the goods and services listed are not currently offered, but goods or services they would like to offer at some point. Being overbroad is not a great idea. Here’s why:

“Use in Commerce” requirement. To register your mark with the USPTO you must currently be using your mark in commerce. According to the TMEP (trademark manual of examining procedure), “the mark must be used in commerce on or in connection with all the goods and services listed in the application as of the filing date.[1] So, when your attorney submits your application, consumers must have the ability to purchase all of the goods and services you assert you offer.

There is a narrow exception to this rule. If you are not currently using the mark in commerce, i.e., not actually selling the goods and services at the time you file your application, you can submit an application if you have a bona fide intent to use the mark. Generally, this means you will start using the mark, i.e., selling the goods and services, within six months of your application being review. Although you can submit an application on an intent-to-use basis, your mark will not be registered until you prove you are actually using the mark, i.e., selling the goods and services identified in the application.

Bottom line: You cannot register your mark in connection with a good or service you do not currently sell or intend to sell within 6 months. You cannot register a mark merely to reserve a right in a mark.[2]

Cost of registering your mark in different classes. Ok so let’s say you truly offer 10 different goods or services and want to register your mark in connection with all 10. The next thing you need to consider is the expense of registering your mark in connection with all 10 goods or services.

The products for which trademarks are registered are categorized into 45 different classes. When preparing your application, your attorney has to indicate which category (referred to as “International Class”) your goods or services fall within. For example, if you sell t-shirts, your product falls within International Class 25 for Apparel; if you own a restaurant, your mark falls within International Class 43 for Hotels and Restaurants.

Do not worry, you do not need to know which class your product falls within, your attorney will determine that. So why mention it?

You should be aware of this because each class registration requires a separate filing fee. If you offer 10 goods but they are all apparel products such that they all fall within class 25, this may not be an issue. You pay one filing fee. However, if you offer unrelated goods, this can be expensive if they fall into different classes. For example, t-shirts fall within class 25, candles fall within class 4, and journals fall within class 16, that is three different classes to register your mark in and 3 different filing fees.

If you are a small business or just starting out, you may not have the budget to pay multiple filing fees. And honestly, it may do your brand a disservice. This leads me to the third reason why being overbroad in identifying the goods or services you offer.

Brand dilution. Brand dilution is when a brand stretches itself out too thin, resulting in inferior products or services that tarnish its name and image. I understand you have a grand vision and want to offer various goods and services. I am not telling you not to dream big, but it’s important, especially in the beginning when you are starting to build your brand, that you focus on one product at a time.

Identify one product that you offer, and perfect it. Once it is perfect, perfect it again, and then move on to the next product. Having a quality product will lead to a brand consumers know like and trust. Good branding is when consumers hear your name, and automatically know what they are getting. When you hear “BMW” you probably think “luxury.” Similarly, you choose to eat at one restaurant over another because of the quality of food and maybe service rendered. You want the same for your brand. You want consumers to hear your company’s name and know what they are getting. Expanding too fast, and offering too many products can affect your brand if the quality suffers.

How do you decide which goods or services to start with? Ask yourself, which products do you most want to be known for? That’s not to say you can’t offer goods in different classes, but if you are being conscious of your budget and can only register in one class at a time, start with your primary product. McDonald's sells southwest salads, but I can almost bet that this is not what consumers think of first when they hear the name McDonald's.

Action Steps:

Take some time and write a list of products. Prioritize them based on which you currently offer, the ones you intend to offer in the next six months, and which product you want to be most known for.

To schedule a consultation, send me an email at erin.darden@parlatorelawgroup.com.

This article does not create an attorney-client relationship. It does not constitute legal advice and is provided for informational purposes, only. In no way does this document guarantee the registration of your mark. I, nor any law firm in connection to which I offer legal services, are not liable for any actions taken based on this document. For specific advice, please schedule a consultation.

[1] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e7.html

[2] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e7.html


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