U.S. Trademark Registration Essentials IV:
The Hidden Landmines of U.S. Goods and Services Classifications
In the conclusion of the previous article, we mentioned that applicants can select different application bases for certain classes or specific items. This article aims to uncover one of the most common "hidden landmines" in U.S. trademark applications: U.S. goods and services classifications and item descriptions.
Clients with experience filing trademark applications in other countries or regions may be accustomed to referencing the "Nice Classification." However, directly applying official Nice Classification terms to a U.S. application, or copying item descriptions submitted in Hong Kong applications word-for-word, will often lead to a single result: receiving an Office Action or even a direct refusal.
Applicants might find this perplexing: Since the Nice Classification is globally recognized and these English terms are accepted in Hong Kong, why do they hit a wall in the United States?
The reason behind this is that although the United States officially joined the Nice Agreement, its substantive examination operates under an extremely strict, microscopic, and specific standard system known as the USPTO Trademark ID Manual.
When selecting U.S. trademark items, Kaizen recommendeds to center your choices on the standard items of the USPTO ID Manual, achieving an optimal balance between compliance and brand protection scope.
Before submission, ensure that item descriptions are reviewed and refined by U.S.-licensed attorneys or professional representatives with extensive practical experience. Avoid blindly copying Nice Classification or other regional registration items. If certain items fall outside the standard list, having professionals adjust the wording to align with U.S. localization standards is the smart strategy to ensure your application sails through quickly, saving both time and money!
Below is a breakdown of the core differences between the two and strategies for handling them:
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Nice Classification vs. USPTO Demands Specificity
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Nice Classification
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USPTO Demands Specificity
|
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Permits relatively
"broad and generalized" wording
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The applicant is required
to specify the exact intended purpose and form of use
|
|
ü "Computer
software"
ü "Electronic
publications"
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Rejection for being
"Too Vague."
|
|
ü "Computer game
software"
ü "Downloadable
software for processing business transactions"
|
|
ü "Downloadable
electronic newsletters in the field of intellectual property"
|
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What If You Cannot Find a Matching Item in the USPTO ID Manual?
U.S. online trademark filing systems are primarily divided into two types: TEAS Plus and TEAS Standard:
(1)
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TEAS Plus: You must select items from the built-in USPTO ID Manual standard items list. If you cannot find the product or service you need, the system does not allow arbitrary modifications.
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(2)
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TEAS Standard: If your required item is not in the standard library, you can choose to pay a higher filing fee and write your own item description through this system.
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It is important to note that self-drafted item descriptions must still pass examination. If the description lacks clarity, the examining attorney may issue an Office Action or even request product photographs to clarify actual use.
Therefore, the most prudent approach is to collaborate with a lawyer or professional representative to select standard items from the ID Manual that both fit your business needs and are officially recognized. This not only saves you the fee difference between TEAS Plus and Standard but also significantly lowers the probability of receiving an Office Action.
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Is It Better the More Detailed Your Item Description Is?
Some applicants might think: Since the United States demands specificity, I should make my product descriptions exhaustive and extremely narrow so that no one can possibly pick faults.
This actually leads to the opposite extreme. If you narrow down the goods description too much, while it may pass examination more easily and reduce the likelihood of conflicts with prior marks, your future legal scope of protection will also shrink, creating loopholes for future brand enforcement or anti-infringement actions.
Unless prior searches reveal a similar mark that must be precisely avoided, it is generally recommended to cover the most complete and comprehensive commercial territory possible within officially accepted bounds.
Kaizen suggests that applicants make good use of the USPTO Trademark ID Manual search engine (https://idm-tmng.uspto.gov/id-master-list-public.html) to browse U.S. item descriptions in advance. Below is a step-by-step screenshot guide:
Press “Filters” to shift to advanced search mode.
Press Class and select class number. Press Search.
The results will show all items in that class.
Enter keywords, and then press the magnifier icon.
The results will show all items containing the keywords.
May refer to the classification of the item.
Items with {}, need to indicate specification.
Combine both methods to search for the most appropriate item.
SEE ALSO：
USA Trademark Registration Procedures and Fees 
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