Friday, December 5, 2014

One does not simply ... file a standard description

Sometimes you need to go to strange places for legal advice. Today is a good example of this. Well, not really specific to today, it just so happens to be a day on which I have been drafting a massive description of goods and services for a client.
Unique descriptions are preferable, especially if you're taking the ring
to Mordor! (Filing a complex mark with the PTO, same thing, right?
Here's my tip for #trademark filers of intent-to-use trademarks for complex technologies/services: listen to Boromir!

When you have any complexity to the goods and/or services that you're filing, I'm a fan of the kitchen sink approach. What do I mean by this? I mean describe what your client has an intent to sell under the mark until you go crazy and try to kill your client... er, Frodo. Wait, no, don't kill anybody, and probably don't try to take on the fighting uruk-hai alone, you probably will die before Aragorn comes to try and save you, but I guess death is its own glory... or some such nonsense. Anyway, describe those goods and services ad nauseam. I mean blisters-on-the-fingers, health-be-damning amounts of time spent coming up with a bagillion ways to describe what it is your client plans to sell.

Chopping at the ring was such a bad idea that LEGO® recreated the scene
to advertise a set about the Council of Elrond...
That's memorably bad.
Why do this? Because trying to chop the ring with an ax was a bad idea. It is also a bad idea to simply submit one or two standard descriptions for what may be a complex good or service. By "kitchen-sinking it" the mark filed becomes much more easily found in searches by would-be filers, examining attorneys, and anyone else who is weirdly nerdy about trademarks that they want to search the PTO database [eyes shifting; hangs head pointing at self].

Importantly, as your client actually brings the products and services to market [cheers: "Frodo did it!"], you can pare the list down to reflect the goods and services actually sold (and you are required to do this), making the extremely long lists into shorter, accurate lists when the time is right. This also allows the opportunity to get as many different terms approved by Examining Attorneys. Even though this will not truly broaden the scope of protection around your client's mark, it will, as stated above, provide more terms which lead searches to your mark, and thus hopefully reduce the number of applications your client may need to consider spending cash (or Gondor soldier lives) on opposing future applicants (and Orcs, those miscreants).

So there's your Friday tip from a guy who throws literally* kitchen sinks whenever he has the green light!

*literally is now defined by the dictionary as meaning both literally and figuratively. Go figure. I literally don't get it [groan].