The USPTO’s Acceptable Identifications Manual has been a blessing and a curse. It is a blessing because trademark applicants can find pre-approved goods or services description that accurately covers their actual goods or services, which eliminates one potential Office Action (i.e., registration refusal) the Trademark Office could issue against a pending trademark application. However, the Trademark Office has pre-approved some very broad descriptions.
In the software context, two of the broad descriptions are “computer software consultancy” and “downloadable software development kits (SDK).” These descriptions cover many fields for and functionality of the actual software. In the advertising context, there is a description of “advertising services.” This too covers a lot of ground. Nevertheless, trademark applicants routinely use these descriptions. In fact, a majority of trademark attorneys start with a pre-approved description and resort to crafting a manual description only if no legitimate option from the Acceptable Identifications Manual exists.
As trademark searchers, we know that the Trademark Office’s likelihood of confusion analysis is limited to the goods and services descriptions used in the application. And we also know that we need to use broad descriptions when we search even though this strategy may return a significant number of results to review. Here are three tips for reviewing results that include broad descriptions like “advertising services”:
- Look at the marks first. If the marks are similar, then look at the goods or services descriptions.
- If the goods or services descriptions are broad, then search the Internet to determine what goods or services the trademark owner is actually offering.
- If the goods or services the trademark owner is actually offering are similar to what you or your client is offering, put that mark in the “no” column. However, if the actual goods or services are different than what you or your client is offering, then put that mark in the “yes” column with an asterisk. The caveat is that the broad description used by the prior trademark owner may illicit an Office Action from the Trademark Office, but it may be overcome with a petition for partial cancellation to narrow the broad description to the marketplace reality.