Using the right goods or services descriptions is key to conduct trademark searches will uncover potential issues with a prior mark. In a prior post, we discussed that it is the goods or services descriptions that are important not the International Class Numbers. When thinking about what goods or services descriptions to use, it is tempting to use the exact wording that describes the goods or services that will be offered with the proposed mark. But using a narrow description in the trademark search is a mistake. Instead, you want to use a broad description.
Why use a broad description? Because trademark owners as a filing strategy try to obtain as broad a description as possible. After all, the goods or services descriptions dictate, in part, the scope of the trademark owner’s rights in a mark. A recent case from the Trademark Trial and Appeal Board demonstrates this filing strategy.
In In re Dyson Technology Ltd. the TTAB decided whether Dyson Technology’s “Suspended lights in the nature of LED lighting fixtures designed to be suspended from a ceiling with uplighters and/or downlighters, the aforesaid optimized to reduce eye strain and increase comfort and productivity; parts and fittings for the aforesaid goods” were related to “Lighting apparatus and instruments – namely, a hand held combination spotlight and floodlight.” Based on the evidence submitted, the TTAB found that the goods were not related, but Dyson Technology’s identification of goods description did not start with this narrow and detailed description.
Dyson Technology filed its request for extension of protection into the United States on July 7, 2016 with the following goods description:
“Apparatus for lighting; electric lights; ceiling lights; desk lights; floor lights; wall lights; suspended lights; spotlights; lighting units; lighting fittings; uplighters; downlighters; combined uplighters and downlighters; lamps; LED lighting apparatus; reflectors; diffusers and lenses for lights and lamps; light bulbs; LED light bulbs; parts, fittings and accessories for the aforesaid good.”
The use of a semicolon (;) in a goods for services description indicates a new good. You can see that Dyson Technology began the application process attempting to register its mark for, among other goods, the broad description “suspended lights.” Dyson Technology received a registration refusal from the Trademark Office and attempted to overcome the refusal by amending its original identification of goods description to:
“ceiling lights; suspended lights in the nature of lighting fixtures design to be suspended from a ceiling with uplighters and/or downlighters; parts and fittings for the aforesaid goods.”
This amendment did not persuade the Trademark Office to withdraw the refusal and it issued a final office action refusing Dyson Technology’s trademark application. Dyson Technology responded to the final office action by further amending its identification of goods description to the actual description of its goods; namely:
“suspended lights in the nature of LED lighting fixtures designed to be suspended from a ceiling with uplighters and/or downlighters, the aforesaid optimized to reduce eye strain and increase comfort and productivity; parts and fittings for the aforesaid goods.”
You can see the progression of Dyson Technology’s identification of goods description. As trademark searchers, if you started with the third, more detailed description, you would have certainly missed marks that may have been concerning even though the third description describes the actual goods. But if you searched more broad for just “suspended lights,” you would have uncovered not only the broad descriptions but also the narrow ones as well because the narrow descriptions include the broad categories.