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TM Search - Narrowing Results - Goods and Services Field

Overview

For every federal trademark registration for a mark, there is a description of the good or service that the mark is attached to. This written description is included in the Goods and Services field, which is abbreviated in the Free Form Search Function of TESS as [GS].

When performing a clearance search, adding searched elements in the Goods and Services [GS] search field is a helpful means of narrowing results and identifying any likelihoods of confusion more quickly.

For a hypothetical clearance search for the mark of “TimberSafe” for a tree cutting service:

This search is only for the mark.

Search: timbers*[BI]

This search is for the mark and narrows for a description in the Goods and services [GS] search field.

Search: Timbers*[BI] AND (tree$ AND (remov$ OR prun$ OR cut$))[GS]

Finding likely descriptions of the goods and services with the Trademark ID Manual

The Trademark ID Manual lists acceptable identifications of goods and services and their respective classifications. The listings are to serve as a guide for filers preparing applications and for the USPTO examining attorneys who review the applications.

When preparing the description for an application, it is helpful to use language directly from the ID Manual to avoid objections by the examining attorneys for too general or ambiguous descriptions, which lead to further inquiries by the Trademark Examiner, hindering the application process.

Failure to correctly identify the goods or services for a mark may prevent the mark’s registration.

Proper selection from the ID Manual is important. First it is necessary to identify whether you have a good or a service. Goods are physical products that bear the trademark, whereas a service is an activity provided to others.

The USPTO provides some helpful guidance regarding good or service identification through the Trademark Informational Network (TMIN) video series.

The description which others or a Trademark Examiner would use for the application, is a good place to start as far as describing the good and services in a clearance search, which is why the Trademark ID Manual is used as a reference to find that description.

Adding the goods and services description to a search

When using the Free Form option in TESS, when performing a clearance search, adding the Goods and services [GS] search field is useful for identifying any likelihood of confusion.

The search includes an AND logical operator and the description next to [GS].

Examples of adding the goods and services description to a search for a hypothetical search

An example hypothetical search can be a clearance search for a tree cutting service named “TimberSafe”, which is the mark.

An first step would be searching in the Trademark ID Manual to identify an accurate description for this tree cutting service.

Inputting “tree cutting service” into the search bar of the Trademark ID Manual, yielded no results.

Inputting “tree cutting” resulted in several findings of goods, but no services.

Inputting “tree” resulted in several findings, including: Tree removal services (IC 044); and “Tree pruning services” (IC 044). Both these entries can likely be entered as services because the service is likely removing trees and in some cases only removing some parts of the trees while leaving some of the tree intact.

Then for a clearance search, using the Free Form option in TESS:

Mark only:

Search: timbersafe[BI] yielded one result, which was not relevant.

Search: timbers*[BI] yielded 185 results.

This amount is not so large that all can be reviewed. But, narrowing the results with the Goods and Services field, may be a quick solution to narrow the results to find a strong source of likelihood of the confusion. This would lead to the following searches.

Mark and description of services:

Search: timbers*[BI] AND (tree$ AND (remov$ OR prun$ OR cut$))[GS] yielded 2 results, none of which looked to be a close match.

The Goods and Services field needed to include “tree” and one of the following variations of removal, pruning, or cut.
The $ truncation operator was used to give the variations of the description.
The truncation operator * would not be used with the [GS] field.
The truncation operator * is used when searching the Basic Index[BI] and Translation Index [TI] field.

Search: (t{V0:2}mber*)[BI] AND (tree$ AND (remov$ OR prun$ OR cut$))[GS] yielded 21 results.

Search: (t{V0:2}mber*)[BI] AND (tree$ SAME (remov$ OR prun$ OR cut$))[GS] yielded 19 results.

Also the logical operator of SAME can also be used instead of AND to have the terms in the same paragraph, or Goods and Services International Class paragraph, in the event that you are getting results where the terms searched in the Goods and Services field are very disconnected by having one term in one International Class and the other term in another International Class.

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