Intellectual Property Attorneys

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The New Patent Law in New Zealand

Streamlining Trademark Application Processing and Lowering Filing Costs

8 years ago


The U.S. Patent and Trademark Office ("USPTO") maintains a US Acceptable Identification of Goods and Services Manual ("ID Manual"), which lists descriptions of goods and services (accessible at http://tess2.uspto.gov/netahtml/tidm.html) for trademark applications. These "standardized descriptions" permit the trademark application filer to obtain reduced application fees by filing a so-called TEAS Plus application, in which the description of goods and/or services is inputted from the ID Manual in online filing.

By using the standardized descriptions, not only are application filing fees reduced, but prosecution of the trademark application is facilitated, since wording issues are reduced or in many cases eliminated by the applicable ID Manual terminology.

What is less well known, however, is that suggestions can be made for addition to the ID Manual, prior to filing. This has the benefit that words and phrases in the proposed description of goods and/or services can be administratively considered by the USPTO and if acceptable, introduced in the ID Manual, prior to any filing. As a result, the subsequent procedure can be streamlined, with any wording issues resolved prior to trademark application filing.

Suggestions for descriptions of goods and/or services to be added to the ID Manual can be e-mailed to TMIDSUGGEST@uspto.gov.  The proposed description of goods and/or services should be specified, together with an identification of the applicable international class of goods/services.

The USPTO will then respond very quickly, typically within one day and often on the same day, with an indication of whether the proposed description is acceptable.  If the submitted proposal is unacceptable, the response from the USPTO will identify the deficiency, whereupon modified description proposals can be submitted.

As an example, if the submitted wording is objected to by the USPTO for reasons of clarity and scope, the e-mail response from the ID Manual administrator may state, "As written, your suggestion is too broad and indefinite for inclusion in the Manual."  The submitter can then revise the wording to narrow and particularized the description, and transmit the revised wording to the ID Manual administrator for fresh consideration.  At that point, if the revised description is determined by the USPTO to be acceptable, the submitter will receive a response such as the following: "Your suggestion will be added to the Manual in the 1-13-11 update in Class 20 pending final review. If your suggestion is changed as a result of this review, you will be notified."

It will be apparent from the foregoing that the submission of proposed descriptions of goods and/or services for addition to the ID Manual can resolve wording issues that would otherwise be raised in the subsequent examination proceedings after a corresponding trademark application is filed. By resolving these issues before filing, lower application fees can be obtained via TEAS Plus submission of trademark applications, and prosecution of the application can be simplified, with the benefit that trademark pendency before acceptance for publication can be substantially shortened due to the reduction of issues that must be addressed by the examining attorney.

Steven J. Hultquist

April 6, 2011


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