Why Custom Trademark Descriptions Are Like Tailor-Made Clothes

In an earlier post, we looked at the official Goods and Services Pick-List and some of the advantages that if offers. The ‘Pick-List’ must be used as part of IP Australia’s ‘Trade Mark HeadStart’ application process. In this post, we look at a couple of potential drawbacks associated with using this list.

The Pick-List: An ‘off-the-rack’ solution

Using IP Australia’s Goods and Services Pick-List is a little bit like buying a suit off the rack rather than having a suit specially tailored to fit you. Depending upon your situation, this may or may not match your needs.

A (potentially) ill-fitting suit

IP Australia undertook a massive task in trying to put together the database for its Pick-List. It started with the terms available from the International Nice Classification and a number of official Office Determinations and then added several thousand extra terms to the 45 classes over many months.

However, the number of different types of goods and services (both in existence now and yet to be thought of) is truly limitless. There are businesses, innovative ones in particular, that are forced to try to fit themselves into the list, rather than truly describing how they use their trademarks. For example, as at the date of this article, the Pick List doesn’t include ‘pilates’. If you run a Pilates Studio, why should you define your exclusive trademark rights using imprecise terms such as ‘physical fitness instruction’?

Many people buy off the rack suits, and do not have a problem with this. However, if the occasion were important enough, and if enough people were going to be seeing you in the suit, you might consider having something tailor made. The time when you come to enforce a trademark against a competitor is nearly always a business-critical moment, and the value of a custom description becomes evident at that time.

“... the Pick List doesn’t include ‘pilates’. If you run a Pilates Studio, why should you define your exclusive trademark rights using imprecise terms such as ‘physical fitness instruction’?”

Different clothes for different purposes

Of more importance is the idea that the Pick-List was designed for a specific purpose, and this purpose doesn’t necessarily correspond with the needs of most applicants. A safari suit might be fine if you’re on safari (particularly if you were holidaying in Africa in the 70’s), but wouldn’t do for a black tie event today.

For optimal protection of your trademark, you need to ensure that: (1) it is accepted for registration and registered, and (2) the registration gives you both broad and enforceable rights.

According to IP Australia, ‘If you use the pick-list when making your application it will automatically classify your goods and services so that they are in the correct class at the time of filing your application’.

You’ll notice that this advantage is only concerned with having your trademark accepted, and not with the strength of the rights that are granted.

The benefit of a custom trademark description

After you register your trademark, you may discover that a competitor is using it in relation to similar goods or services. The description in your trademark registration is crucial to your dealings with that competitor from then on. Your specification will be central to the letter of demand that is sent by your lawyer, and will be quoted in the court documents that are required when you bring your case (assuming it gets that far) .

The description needs to be carefully crafted so that it accurately describes the goods and services that you offer, but general enough to cover as much of the field as possible. Further, it needs to be drafted in such a way that it makes it very easy to prove that your competitor (whoever that may be, and whenever that may be) is infringing upon your rights.

Questions for your trademark advisor

A properly qualified and experienced trademark advisor has the skill and the experience to draft a unique description that does all of these things, and to avoid the classification errors that often trip up novices.

However, it does take time and thought to craft a custom trademark description. It’s important that you ask whether your advisor will in fact be giving you a custom description rather than an ‘off the shelf’ product. In other words, it’s important to know whether you’re getting a tailored suit, or one that’s off the rack.