Getting your goods and services right in the USA
If you’re expanding your business to the United States (US), it’s important to understand how to protect your brand while you’re there. Your trade mark shows your customers who you are and the more successful your business, the more valuable your trade mark becomes.
One of the most important parts of your US trade mark application is selecting the correct goods and services. Like Australia, the US uses the Nice Classification System. Goods and services are divided into 45 classes; 34 goods classes and 11 service classes. When applying for trade mark protection in the US, you will need to provide very specific descriptions of goods and services you want to claim.
In some countries, it’s common to list the class heading (the description of everything that the class covers) and claim all items in that class for your trade mark. These broad claims will not be accepted by the US. Your list of goods and services will need to be specific and concise about which items in each class you are claiming for your trade mark.
To find what you want to claim, you can search the USPTO’s Identification of Goods and Services Manual (ID Manual). It's important to note that close enough is not good enough – the class you choose must accurately describe your goods or services or you may not be granted a trade mark and your fee will not be refunded.
If you are applying for your US trade mark using the Madrid Protocol, you should be aware that the goods and services used for your Australian trade mark application/registration may be considered too broad by the USPTO and you may be asked by the USPTO to narrow the scope.
Consider seeking advice from a US IP attorney about the best way to draft your application, especially regarding the specification for goods and services on which you will use (or intend to use) your trade mark.
Additionally, you could refer to the WIPO Madrid Goods and Services Manager tool for an indication of whether your description of goods and services would be acceptable at the USPTO.
It’s worth taking the time to get your goods and services right the first time, this will save you time and money in the long run. If you’d like to know more visit IP Australia’s selecting your goods and services page on their website.