What Does An Office Action About Goods and Services Mean For My Trademark ?

So you got an office action about the goods and services defined on your trademark application. Now what?

This happens more often than not when people DIY their trademark or use a big box like LegalZoom, Trademarks On Call, etc. What this means is that the goods you have defined are too broad or it's indefinite, meaning that you typed in something that's just not really clear about what you're doing with the trademark.

CAUTION.

This might seem easy— you might think you can just go back and explain and change the wording. However, that change in wording has legal significance because that determines the meaning of your mark and how your trademark is evaluated.

Say you got an office action with indefinite goods or something like goods are too broad or services are too broad. You go back and change it and now you get a refusal for “merely descriptive.” This is because you had narrowed up your definition so much that now your trademark sounds like it's describing your services.

Watch out for that! This box might seem so innocent because we're just saying what we're doing with the word, but it does have legal significance.

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Be very cognizant that if you have a refusal like this or you have an office action or advisory of sorts (anywhere we're talking about the classifications of goods and services), that you have legal help. An attorney can make sure it’s reworded in a way that won’t trigger more issues down the line. This makes registration a lot easier for you in the long run!

Feel to reach out at hello@cenglishlaw.com if I can serve your business! I would love to help!

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Courtney English