Once you’ve picked a name to trademark the second step is describing the goods and services for the trademark. This can be a difficult process for someone inexperienced with trademarks. However, here are some quick tips to remember (and a really good resource!).
First, trademarks are registered for particular things. To take an example, Apple is registered for “computers” (amongst other things) and “iPhone” is registered for “mobile telephones.” What you register your trademark for will limit your legal rights. For example, the same trademark can be registered by different people provided it’s for different goods and services. Trademarks being focused on preventing confusion in the market, it’s unlikely that a company making, say, “t-shirts” would be confused with a company providing “legal services”. Obviously there is lots of room for interpretation here!
Second, all goods and services are divided into 45 different classes. Most countries in the world use the same forty five classes. The first thirty four classes relate to goods while the remainder relate to services.
Third, each class relates to a group of things, not just one particular thing. For example, class twenty five relates to clothing, footwear and headgear. Some class groupings are not as logical – for example alcoholic beverages are in class thirty three, while beer is in thirty two. Obviously there are some political and social reasons behind some of the groupings. Also, having the groupings means that it’s easy to search for similar marks – a very simplified search strategy might look for all similar marks in classes that have similar goods and services to your own.
Fourth – and this is one of the most common mistakes – if you operate a retail store selling third party goods, you’re in class thirty five. Some people make the mistake of trying to register the trademark in each of the classes of the goods they sell, when in fact they are selling goods from someone else and their trademark is being used for retail sale.
Finally, the descriptions of good and services should cover your use and intended use of the trademark – no more or less. The descriptions should be plain language and easy to understand, without any jargon.