In the previous post we discussed how you can create high quality specifications. In this post we’ll go through some practical examples to improve your understanding of the whole process.
Example 1: A software business in New Jersey specialises in providing software for the accounting industry. Their customers are currently all within the United States.
Since this business operates solely within the United States we will use the USPTO’s Trademark ID Manual (click here). Enter the broad search term “software” and then have a look through the search results. Don’t be alarmed at the volume of results – by reviewing the list we can quickly see that there are only 4 or 5 classes that pertain directly to the software industry.
After reviewing the search results we have devised the following draft specification for this software business:
Class 9: Software for use in the accounting industry.
Class 35: Wholesale and retail services featuring software for use in the accounting industry.
Class 42: Consulting services in the field of design, implementation and use of accounting software; software development and product development consulting in the field of software for the accounting industry; updating and maintenance of computer software for the accounting industry; technical support services, namely, troubleshooting of software for the accounting industry.
A few key points to note:
(1) It is specification best-practise to separate each entry by a semi-colon. This enables the scope of each entry to be clearly defined and helps avoid any confusion or ambiguity.
(2) Try to be as concise and specific as possible. You need to ruthlessly remove any superfluous or vague wording.
Example 2: A pharmaceutical company in London is seeking trademark protection for all of Europe.
Since this company is seeking European protection we shall use WIPO’s Goods and Services Manager (GSM) tool (click here).
After entering search terms such as “pharmaceutical” and “medical” and analysing the results we have compiled the following specification:
Class 5: Pharmaceutical preparations for treating allergies; pharmaceutical preparations for treating asthma.
Class 42: Conducting clinical trials for pharmaceuticals; pharmaceutical research and development.
Class 44: Medical and pharmaceutical consultation; provision of pharmaceutical information.
Key points:
(1) Avoid using indefinite words. Delete entries like “and similar goods” or “etc” or “and the like”. You need to precisely and accurately stipulate what your goods and/or services are.
(2) If this company subsequently expands into the United States/Canada and seeks trademark protection in these markets then they will need to more precisely define some of their specification.
Example 3: A Sydney jewellery firm is seeking protection for its 7 jewellery stores spread across Sydney.
At the moment the jewellery firm retails only domestically so we can either use IP Australia’s classification search tool (click here) or WIPO’s Goods and Services Manager (click here).
We recommend using WIPO’s tool for the majority of countries outside the United States because it has the most comprehensive range of specification entries and is also frequently updated with any necessary revisions.
So after searching with the keyword “jewellery” and analysing results we devised the following specification:
Class 14: Jewellery; rings (jewellery); pendants (jewellery); jewellery articles.
Class 35: Retail services relating to jewellery.
Class 36: Jewellery appraisal.
Class 37: Maintenance and repair of jewellery and watches; jewellery remounting.
Class 42: Jewellery design.
Key points:
(1) Your specification must contain only generic terms that an average consumer of the goods and/or services would readily understand.
(2) Only include services that you are providing to others. Don’t list services that you use to promote your own business such as advertising or marketing. You would only include advertising or marketing if you are providing advertising or marketing services to other businesses.
Manually created specifications
In the above 3 examples we have used the USPTO’s Trademark ID Manual and WIPO’s Goods and Services Manager to search and select entries from their pre-approved lists. If you cannot find an entry that accurately describes the goods and/or services that you are providing then you will need to manually create your own specification.
You can do this in a number of different ways. You can use a portion of a pre-approved entry and then modify it so that it more accurately reflects the goods and/or services that you are providing. You could also check the specifications that your main competitors have used with their trademark(s).
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