Choosing the Right Trademark Search Description

The purpose of a trademark search is to find the problematic mark. That’s the game. This means starting with the right trademark search descriptions for the goods or services at issue is a key decision point that may be the difference between winning or losing the game.

The temptation at this decision point is to use the trademark search description that describes the goods or services at issue in detail. However, the detail at this point is not what’s important because it results in too narrow a scope of the search. Instead, when you conduct a trademark search you want to use a trademark search description that captures the goods or services you are or intend to offer with the mark.

It is wise to do this for a couple of reasons. First, you want to capture as many potentially relevant marks as possible so you can determine which marks are truly concerning and which marks are not. Second, and not talked about often, is because most attorneys that file trademark applications use a description that the United States Trademark Office has already approved.

To avoid unnecessary refusals, the Trademark Office published a searchable identification of goods and services manual. If you choose a description from this manual, the Trademark Office will not issue a refusal based on an indefinite goods or services description. So let’s explore the manual a little.

Some descriptions that have been accepted by the Trademark Office are:  “restaurant services,” “beer,” “mobile phones,” and “vacuum cleaners.” Because the goal of a trademark attorney is to get as broad protection as possible for their client, they are using the broad descriptions the Trademark Office has approved. The only reason to go narrow at the beginning is to avoid a potential cancellation proceeding to narrow later by another party. But if a dispute would arise, you can always voluntarily narrow in the interest of settling a case.

Most trademark attorneys are using broad descriptions when they can, so you should be searching using broad descriptions as well. Narrow descriptions at the search stage may result in missed marks that end up being concerning.

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