When filing a trademark registration, the applicant must identify the goods and services with which the mark is, or will be, used. Often, applicants try to use a broad description (i.e., “shirts” rather than “polos”) so that if new related products are introduced under the mark, the applicant need not apply for a new registration to cover the new goods. However, sometimes these broad descriptions come up against rules requiring that the description be “specific, definite, clear, accurate, and concise.” TMEP §1402.01. For example, it is not sufficient to list software. Rather, the Trademark Office requires that the applicant designate if the software is prerecorded (i.e., available on a disc), downloadable, or made available as a software-as-a-service. Whether the software is recorded, downloadable or available as a software-as-a-service affects the class into which the software falls, regardless of the type of software. The Trademark Office does publish an ID Manual which lists accepted descriptions to assist applicants in identifying the class(es) into which their goods or services fall.
The Trademark Office decided to clamp down on what it terms are “free form” descriptions where an applicant does not use pre-approved descriptions from the ID Manual. The Trademark Office issued new rules which went into effect January 18, 2025, that are designed to urge applicants to use the Trademark Office’s preapproved descriptions (or to punish those who use free text entry of goods and service IDs). Under this new rule, there will be a $200 per class fee for entering descriptions in free text form (i.e., not using the preapproved descriptions.) The Trademark Office defends this fee by noting that (1) preapproved descriptions will make it easier for examiners to review the identification of goods and services and (2) that it expects most filers will select their IDs from the ID manual. Although the Trademark Office may be correct that most applicants will be able to use the ID Manual, often the descriptions in the ID Manual are not accurate for the good or service to be provided under the mark. This is especially true with new technologies.
This rule will disrupt the manner in which many applicants list their goods and services when filing a registration application. Often, if an applicant is filing for a new version of the same mark (i.e., a word mark after a logo mark has already been filed), the applicant would typically use the same description as the prior registration. However, the ID manual is updated frequently. Thus, the prior description may no longer be an approved description, and the applicant will need to provide a different description for its mark.
Additionally, applicants often use broader terminology (i.e., “playground equipment”, “clothing”, “clothing and accessories therefore”, or “software”) in their initial descriptions. One reason for this is to avoid broadcasting exactly what will be offered under the mark for as long as possible. A second reason is that an applicant may not have yet fully identified the full universe of, for example, clothing items, to be provided under the mark. In the software example above, an applicant not have determined how it will distribute the software, i.e., as recorded software, downloadable software, or software-as-a-service at the time of filing of the application. This is especially true in the situation of an intent-to-use application where the full realm of goods or services to be provided are still under development. However, such strategies are discouraged in the new rules as the Trademark Office will assess an additional $100 fee per class when the Examiner determines that the application contains insufficient information.
One potential strategy to comply with these new rules and fees is to pay the fee for only one class in applications with goods or services that may fall into multiple classes. Sometimes it is not clear where items should be classified. Other times the applicant needs more time to determine exactly what the applicant wants to include in its application. This strategy, while preserving as much flexibility as possible for the applicant, would incur both the fee for insufficient information and the fee for using free text format.
In view of these changes, Applicants will need to work more closely with their attorneys to develop the descriptions of their goods and services listed in their registration applications. Unfortunately, this may increase the cost to the applicant of preparing an application for filing.
If you have any questions regarding your trademark, please feel free to contact the IP attorneys at Sandberg Phoenix.
