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Overly-Long Goods and Services Descriptions Hamper Trademark Filings

A colleague passed on a new application for MONEYTAX. She said it had the longest goods and services description she’d seen in a while. She’s not kidding. It has hundreds of parenthetical phrases describing the applicant’s administration services, advisory services, assistance services, business services, business consulting services, business investigation services, business management services, business risk management services, consulting services, financial records services, and many, many others. In alphabetical order. Ad nauseum.

This kitchen-sink approach raises several issues. First, a U.S. trademark owner does not gain legal real estate simply by grabbing as many categories as the Patent and Trademark Office will allow. Trademark ownership here arises through use, not registration. 

Second, a trademark owner need not specify every last category used in connection with the mark. After an owner establishes its rights, it is protected against junior uses that create a likelihood of confusion. That means a competitor likely can’t register MONEYTAX (or a similar mark) in connection with “business advice and Information about a corporate executive whose wealth amounts to at least a billion dollars, pounds, or the equivalent in other currency” if a senior user has already registered MONEYTAX in connection with “business advice and Information about a corporate executive whose wealth amounts to at least a million dollars, pounds, or the equivalent in other currency.” (To be safe, the MONEYTAX applicant seeks to register both categories of service.) Listing every last little variation of good or service provided seems like overkill. Correction: it is overkill.

Third, a kitchen-sink applicant sets itself up for having its registration cancelled on grounds of fraud. In the future, if a competitor determines that the registrant is not making actual use of even one of the hundred-plus categories of goods or services listed, the competitor may be able to have the entire registration cancelled. If it’s important to obtain a registration, it’s got to be equally important to maintain it. I can think of no good reason why an applicant should not split up a laundry list of goods and services into different applications. Sure, the applicant has to pay additional filing fees, but if one registration becomes vulnerable to challenge, the others won’t be affected. 

My advice? (As if you wanted more.) Keep it simple. Long goods and services descriptions may look impressive. But in actuality, they cause a lot more harm than good.

Posted on December 9, 2008 by Registered CommenterMichael Atkins in | Comments1 Comment

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Reader Comments (1)

Here, here. My favorite was Speedo for cat-o-nine tails - really??? Not surprisingly this is a Section 44 application, that's what the most egregious are.
December 10, 2008 | Unregistered CommenterAnonymous

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