“I have never created a trademark specification before. What is the best way for me to learn?”
A great way for you to increase your knowledge is to use classification tools. If you are only filing in the United States then we recommend you use the USPTO’s Trademark ID Manual (click here). If you are filing in any other country then we recommend you use WIPO’s Goods and Services Manager (click here).
Simply type in an appropriate keyword that describes your goods and/or services into the classification tool and scan through the results. You will quickly acquire an understanding of what classes are most applicable to your business. If you are unsure what keyword to use just ask yourself what goods and/or services your business provides.
“We are an architectural consultancy firm so we have selected “architectural design and planning” in class 42. Since we frequently advertise in the media do we also select advertising? Also should we select office functions and business administration?
Advertising services are for advertising agencies that provide advertising services for other businesses. An example would be Saatchi & Saatchi so you wouldn’t include advertising in your specification. While you undoubtedly have staff that carry out office functions and business administration the key point is that they don’t do office functions and business administration for other businesses. They are doing it for your own business as an internal business function only.
I am a car mechanic so have selected “vehicle maintenance and repair” in class 37 and “vehicles” in class 12. Is this correct?
Your class 37 entry of “vehicle maintenance and repair” is correct however a class 12 entry of “vehicles” would only apply to companies that manufacture vehicles such as Ford or General Motors.
So the fundamental concept underlying trademark specification is to only apply for those goods and/or services that your business directly provides to other people or businesses.
Another example is a business that makes knitted clothing. This business should apply for the class 25 entry of “knitted clothing” rather than the raw materials that they use to make it such as wool and yarn. The knitted clothing is the good that their business directly provides while the wool and yarn are merely raw materials that they use to make their knitted clothing.
Can I change my goods and/or services after I have filed my application?
You can amend or limit your filed goods and/or services as long as you do not broaden the scope of the filed specification. For example, if you filed a class 25 specification of “dresses” then you could amend it to “wedding dresses” however you could not amend it to “footwear”.
I have searched those classification tools however cannot find a suitable entry for my business. What should I do?
You could use part of a pre-approved entry and then modify it so that it more accurately reflects your goods and/or services. Another option is to research what specifications other traders in your industry have used with their trademarks.
If I use class headings for my specification does that include all the goods or services in that class?
No. Class headings only give a very broad overview of the type of goods or services covered by that class. For a list of all the class headings and explanatory notes you can click here.
TMpedia recommends this trade mark law firm who has been personally endorsed by the Shark Tank’s Kevin O’Leary. They offer a money-back guarantee if your trade mark is not approved by the USPTO.