How Should I List Products and Services in My Trademark Application?

Just a reminder: a trademark does not give you a monopoly over the name, logo or tagline in vacuum. Trademark does not make you the owner of that name. What you end up owning is the combination, the mental link between the brand and the particular products and services that you offer.

So whenever you file your trademark application, not only do you have to tell the Trademarks Office what the trademark actually is, you should also tell them what products and services you offer under that brand and that you want to make sure that nobody else in that jurisdiction has a legal right to use that brand in association with those or similar products and services.

So, there are a few strategies that you should be aware of when you file your trademark application.

First of all—you need to put you visionary cap on—you need to be very clear what products and services you are using today and that you may end up offering at some point in time in the future, foreseeable future. Think about 2–3 years from now: what else can you start offering under that same brand. And the reason that I’m saying 2 or 3 years is because in both Canada and the U.S. after your trademark gets allowed, it won’t get registered until you tell them (or show them in the U.S.) that you already commenced using the trademark in connection with all the products and services listed in your trademark application. So if you know that you are not going to do something, don’t add that to your trademark because it still won’t register for that particular product or service. And you only have so much time from the filing date to the registration date to actually show the use of that brand for a particular product and service. But again, if you think, “You know what? I might or I might not have a book with this name, I might or I might not have a podcast, I might or I might not sell t-shirts…” I don’t know. But, you need to be very clear, what are you probably going to end up using this trademark in association with.

And here is the second thing to consider. A lot of business owners say, “We might have some promotional things, should we get a trademark for those?” Usually the answer is no. Promotional things are not what your business is about. Every single businessman or businesswoman has a business card. We all have business cards. And the business cards have the information about who we are, what we do, how we can help people to do what we do for them. But nobody in their right mind trademarks their brand in association with business cards unless we offer printing services and we make business cards for others.

So, approach the list of your products and services from that perspective: does it have value by itself or does only serve to promote my main products and services. So if you are giving away t-shirts, that have your logo but the only purpose of that is to drive sales to your product—maybe you are an accounting firm, maybe you are a car dealership, or a software company, but you are not really in the business of selling t-shirts—then you don’t need to trademark that brand for t-shirts. But if t-shirts is the business, and you are actually going to have a store where people are going to buy your t-shirts and that’s what going to make you money, certainly do that.

So here is another thing. Very importantly, the trademark application is not your marketing booklet. You don’t have to prove to the Trademarks Office how great your products and services are. They don’t care. They don’t care how good they are, they don’t care how they’re different from everybody else who does the same thing, all they care about is the list. So if you have an accounting business, you don’t need to tell them, “Well, we do accounting services and we have high quality and we’re very personable”. They don’t care. All they care about: “Accounting services”. That’s it, thank you. Don’t use your trademark application as your marketing piece. We see these all the time, and the Trademarks Office does not like them. They always want you to rewrite them and sometimes you just reveal too much and you run the risk of them having to find that your mark is descriptive.

Now, the other thing. Remember what I said you only want to only put products and services in the list that you are currently using or that you think you might be using in 2-3 years, right? Having said that, the way you put the things in the list, you want to be as broad as possible. So, if you can get protection for the entire industry, don’t narrow it down too much. Because that will allow you to use that brand, and stop everyone else from using similar brands in overlapping industries. There is always this battle between the trademark owner and the Trademarks Office because the Trademarks Office wants the list to be very specific. They want to make sure that it’s clear exactly what you are doing and you want to cover as much as you humanly possibly can. So, one of the strategies that you can use is to file a trademark deliberately for too broad a list. And then, when they come back with an office action and say, “No, it's too broad,” you will be able to chip away from here, and here, and here, and here and chisel it into something that they will accept but still be broad enough for you to be happy about. But, you have to be very careful with this because if you don’t know how to respond to Trademarks Office’s objections, if you don’t know how to respond to those office actions, you might not want to do this. Because the last thing you want is to be surprised with an office action that you don’t know how to respond to.

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