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.

• Does My Trademark Need to Match My Company Name? ()
• What Is a Trademark? ()
• Can I Add More Products and Services to My Trademark Application After It Has Been Filed? ()
• Where Should I Register My Trademarks? (Deciding on Jurisdictions in Which to File Trademarks) ()
• What Is Conventional Priority? ()
• Can I Change the Trademark Itself After My Trademark Application has been Filed? ()
• How Long Does It Take to Register a Trademark? ()
• Can I Trademark Dictionary Words? ()
• Can I Trademark the Same Brand for Different Products or Services? ()
• Do All Countries Protect Unregistered Trademarks? (Common-Law Trademarks) ()
• Can I Trademark a Brand Before It Is Launched? (Intent-to-Use Trademarks) ()
• Is My Trademark Available? ()
• Should I Trademark My Startup's Brand? ()
• In Whose Name Should I Apply For My Trademark? ()
• Will the Trademarks Office Help Me Enforce My Trademarks? ()
• Should I Trademark a Logo Done On Fiverr? ()
• How Much Does It Cost to Register a Trademark? ()
• Should I Trademark My #Hashtags? ()
• Are There Annual Trademark Maintenance Fees? ()
• If I Register My Trademark, Does It Mean No One Can Use It? ()
• Four Things Most Commonly Trademarked (The Trademark Dance) ()
• How Does Trademark Factory's Guarantee Work? ()
• What Are Nice Classes of Goods and Services ()
• Do I Have to Be an American Resident to File in the U.S.? ()
• How Are Service Marks Different From Trademarks? ()
• What Are Oppositions? ()
• 3 Most Important Benefits of Registering Trademarks ()
• Why Register a Trademark in Canada to Get a .CA Domain Name? ()
• What is Post-Allowance Statement / Declaration of Use? ()
• Am I Protected Between the Filing and the Registration of My Trademark? ()
• What Is Post-Registration Statement of Use? ()
• How to Use Trademarks to Create a Sense of Uniqueness for Your Business? ()
• What Goes Into a Trademark Application? ()
• What Happens If You Don't Respond to Correspondence from Trademarks Office in Time? ()
• What Makes a Brand Valuable? ()
• Is Registering a .COM Domain Name Enough to Secure Trademark Rights? ()
• Why Is It Important to Preserve Evidence of Use of My Trademarks? ()
• Do I Need an Agreement with My Logo Designer? ()
• Andrei Mincov's story ()
• What is Madrid Protocol? ()
• Trademark Factory Ultimate package ()
• What Are Official Marks in Canada? ()
• Trademark Factory I Feel Lucky package ()
• How Will a Trademark Examiner Examine My Trademark Application? ()
• Can You Trademark Book Titles? ()
• Trademark Factory All-Inclusive package ()
• Trademarks vs. Trade Names ()
• Look-Alike and Sound-Alike Trademarks ()
• Will the Trademark Examiner Check Other Applied For Trademarks? ()
• Trademarking Words in a Fancy Font? ()
• Will the Trademark Examiner Check Unregistered Trademarks? ()
• You Received an Office Action. Now What? ()
• How Long Is a Trademark Registration Good For? ()
• When Should I Trademark My Brand? ()
• Why is Google the Textbook Example of What Not to Do with Your Trademark? ()
• Should I Claim Color as a Feature of My Trademark ? ()
• What Is the Difference Between Trademarks and Patents? ()
• What Is the Difference Between Trademarks and Copyright? ()
• When Should I Trademark My Logo? ()
• What Are the Two Main Reasons My Trademark Application Can Be Rejected? ()
• What Is the Trademarking Process? ()
• Can I Mention Someone Else's Trademark on My Website? ()
• What Is An Acceptable Specimen of Use? ()
• What Are Generic, Descriptive, Suggestive, Arbitrary, and Fanciful Trademarks? ()
• What Is UDRP Uniform Domain Name Resolution Policy? ()
• How Do I Trademark Product Names? ()
• When Am I Allowed to Put TM Next To My Brand? ()
• How Do I Trademark Service Names? ()
• What Are Word Marks, Design Marks, and Combined Marks? ()
• What Should I Know About Trademarking Slogans and Taglines? ()
• Should I Trademark My Name Or My Logo ()
• Adding Elements to My Trademark to Overcome Confusion or Descriptiveness ()
• Are Famous Trademarks Treated Differently From Regular Trademarks ()
• Received an Invoice For International Publication of Trademark ()
• What Should I Do If Somebody Infringes on My Trademark ()
• Do Trademarks Protect Their Foreign Equivalents ()
• What Should I Do If Somebody Accuses Me of Infringing Their Trademark? ()
• Asian Domain Name Scam ()
• What Are Two Biggest Branding Mistakes? ()
• Are Dead Trademarks a Problem? ()
• What Is The Difference Between a TM and an R in a Circle Symbols ()
• What Does Using a Trademark Mean? ()
• How Do I Choose a Great Brand for my Business, Product, or Service ? ()
• What Is Weekly Confusion Watch Service? ()
• Supplemental Register ()
• What Are Ornamental Trademarks? ()
• What Happens If I Don't Renew My Trademark In Time? ()
• What Does Confusingly Similar Mean? ()
• What Is a Trademark Assignment Agreement? ()
• What Does Date of First Use Mean? ()
• What Is a License Agreement? ()
• Why Is Search So Important? ()
• What Are Incontestable Trademarks? ()
• How Do I Check the Current Status of my Trademark Application? ()
• Important Amendments to Canada's Trademark Law ()
• How To Trademark a Name and Logo ()
• Trademarking Strategies For Life And Business Coaches ()
• How Do I Cancel Someone Else's Trademarks? ()
• Why Do Celebrities Trademark Their Catchphrases? ()
• How George Clooney Made $1 Billion Using Trademarks? ()
• Misspellings and Other Changes to Get Around Someone Else's Trademark ()
• How To Protect Your Brand On Amazon? ()
• Dividing a USPTO Trademark Application ()
• 5 Movies with Unbelievable Scenes about Trademarks and Intellectual Property ()
• Trademark Factory's New & Improved I Feel Lucky Package ()
• The Dumbest Advice About Trademarks You Could Ever Give ()
• 5 Things You Should Never Say About Your Brand ()
• Trademarks vs Domain Names ()
• What's Your Brand Worth? ()
• 3 Y's Of Protecting Your Brand ()
• Matrix of Success 2 Things a Business Needs for Success ()
• How Coca Cola Trademarked Their Brand ()
• Trademarks: Certainty vs. Commitment ()
• Trademarking Process In a Nutshell - TMs Into Rs Brand Protection Formula ()
• Can I Trademark An App ()
• 3 Types Of Businesses And What This Has To Do With Trademarks ()
• Incorporation vs Trademarking ()
• 3 Nasty Trademark Rip Offs And How To Avoid Them ()