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Ways to avoid a United States Patent and Trademark Office action concerning a product and service description before filing a trademark application.

One of the most common actions issued by the United States Patent and Trademark Office (“Office”) concerning a trademark application has to do with the product or service description given by the applicant (i.e., the identification of goods or services).  Typically, the action says the identification is unacceptable as indefinite and requires clarification.  In many cases this happens because an applicant broadly describes the products or services and or uses such words as “including,” “such as,” “comprising,” “and the like,” “and similar goods,” “products,” “concepts,” “like services” and other indefinite terms and phrases, in contrast to using  “namely,” “consisting of,” “particularly,” and “in particular” that are usually acceptable.  For example, an application that indicates the products are “computer programs” or “computer programs comprising software for use by doctors” is likely to result in an action because the description is too broad.  In response, an examiner would typically request the applicant to specify the particular nature of the program and give guidance to the applicant by indicating that a description such as “computer programs for use to measure the hearing abilities of patients” would be acceptable, if accurate insofar as the applicant’s products are concerned.  Keeping these thoughts in mind, to avoid this type of action, an approach to take is to carefully describe the products or services using the common commercial name for them.  Looking at descriptions in the Office’s Acceptable Identification of Goods and Services Manual can be a good way to find acceptable descriptions that correspond to an applicant’s goods and or services.  It is available for viewing at the Office’s website.  Look here.  

Future blogs will add to this discussion.