Identification of Goods and Services in Trademark Applications: Key Considerations

Breadth of Identification, Impact on Foreign Filings and Enforcement, Implications of USPTO Use Audits

Recording of a 90-minute premium CLE webinar with Q&A


Conducted on Thursday, September 3, 2020

Recorded event now available

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Program Materials

This CLE webinar will guide trademark counsel on the identification of goods and services and the considerations applicants should keep in mind when crafting identifications. The panel will discuss obstacles to registration and the implications of the USPTO's proof of use audits on crafting identifications. The panel will offer best practices for crafting of the identification of goods and services in trademark applications.

Description

Correctly identifying the goods and services that a trademark applicant intends to associate with any proposed mark is critical. While it seems like a straightforward process, it is not. It calls for significant thought to determine what should and should not be included in the identification. How broad should the identification be? What are the potential implications of what is involved when also filing foreign applications and seeking to enforce trademark rights globally?

Further, counsel should pay special attention to drafting the identification because once the trademark application is filed, goods and services can no longer be added.

Of note, the UPSTO is cracking down on the intent-to-use and use in trademarks to combat fraud. What is included in the identification may make it more likely that the mark owner would be audited. Because such audits could undermine a company's enforcement of its mark, trademark counsel should carefully consider what to include in the identification of goods and services.

Listen as our authoritative panel reviews the requirements and then focuses on how much to include in the identification of goods and services and the considerations applicants should keep in mind. The panel will also outline obstacles to registration. The panel will discuss the Trademark Office's focus on cracking down on intent-to-use and use and the interplay of those audits with the identification of goods and services. The panel will offer best practices for crafting of the identification of goods and services in trademark applications.

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Outline

  1. Requirements
  2. What should/should not be included in the application
  3. Considerations when crafting identification of goods and services
    1. Single class application
    2. Multi-class application
    3. How broad or narrow
    4. Implications for international filings
  4. Implications of USPTO audits and interplay with identification of goods and services
  5. Best practices for crafting identification of goods and services

Benefits

The panel will review these and other essential issues:

  • What are the best practices for U.S. trademark counsel for crafting identifications of goods and services?
  • What key factors should U.S. trademark counsel consider when crafting identification of goods and services for applications in the U.S. and outside the U.S.?
  • How detailed or broad should identifications be generally and what specific circumstances might impact the analysis?
  • What is the Post Registration Proof of Use Audit Program and what is the Technology Evolution Pilot Program?

Faculty

Pheiffer, Rory
Rory P. Pheiffer

Partner, Deputy Chair, Intellectual Property Department
Nutter McClennen & Fish

Mr. Pheiffer’s practice covers a broad spectrum of intellectual property issues, including domestic and...  |  Read More

Weseman, Draeke
Draeke H. Weseman

Attorney
Greenberg Traurig

Mr. Weseman creates consistent, successful outcomes for brands by reliably applying hard-earned knowledge of...  |  Read More

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