When filing a U.S. trademark application, one of the most critical steps in the process is to accurately and appropriately identify the goods and services associated with your trademark. This selection determines the scope of protection for your mark, impacts potential trademark infringement cases, and influences how easily you can extend your mark to other products or services in the future.

One vital requirement of the U.S. Patent and Trademark Office (USPTO) is that all goods and services listed in your trademark application must eventually be used in U.S. commerce before the trademark can be registered. Let's delve into how you can effectively choose your goods and services for a successful trademark application.

Goods and services refer to the specific products or activities that your business offers under the trademark you're applying for. For example, if you run a coffee shop, your goods might include "coffee beans" while your services could involve "providing food and drink."

The USPTO uses an international classification system, the Nice Classification, to categorize goods and services into 45 different classes – 34 for goods and 11 for services. Each class represents a distinct category of products or activities.

Start by making a list of all the goods and services your business currently offers under the proposed trademark. Be as specific and detailed as possible. A common mistake is to be overly broad or vague, which can lead to rejection by the USPTO.

While your current offerings are a good starting point, it's equally important to consider your future business plans. Are there any new goods or services you plan to offer within the next few years? Include these in your application as long as you have a bona fide intent to use the mark with these additional goods or services.

Each good or service must be assigned to one of the 45 classes defined in the Nice Classification. Often, a single trademark will cover multiple classes. For example, a restaurant might file under Class 43 for "restaurant services," but also under Class 30 for "coffee beans" if they sell their own branded coffee.

For a trademark to register in the U.S., the trademark must be used in commerce for all goods and services identified in the application. "Use in commerce" means that you are using the mark to sell your goods or services across state lines or internationally.

When filing a trademark application, you can file based on current use (Section 1(a)) or intended use (Section 1(b)). If you file under intended use, you will need to later file a Statement of Use or an Amendment to Allege Use demonstrating use in commerce for each good or service. Failure to prove use with all goods or services may result in the denial of your application or a narrowing of your protection to only those goods or services for which use has been proven.

Keep in mind that it's a federal offence to make a false statement to the USPTO and doing so will end with your trademark being unenforceable against other parties and likely cancelled.. Therefore, be honest and precise when specifying the goods or services you’re currently using or intending to use in commerce.

A trademark application is a snapshot of your business on the date you file the application. Businesses expand and grow over time into new products and services. This leads to people making fatal errors in drafting their trademark applications.

A common approach unrepresented trademark applicants take is to review their competitor's registered trademarks and simply copy the entirety of their goods and services into their own application. This usually doesn't work because older, more established companies will have far more expansive offerings of goods and service compared to a new business. Compare a new athletic clothing company to Nike® and one can quickly imagine how the copying strategy won't work.

Additionally, copying the description of competitor's goods and services will likely gloss over important differences between businesses. The trademark office will refuse to register applications where the goods and services applied for does not 100% match the evidence presented to show use in commerce. It's an expensive mistake to spend hundreds of dollars on fees and wait months for a review, only to be denied registration because of sloppy drafting.

Your trademark application must reflect what products and services you have actually sold to U.S. consumers if you are filing based on your actual use.

If you are filing based on your intent to use the mark in the future, your application must reflect those goods that you will be able to sell before you run out of extensions of time to file a Statement of Use.

Note that even though you don't list every single item in a class that you may someday sell, you are still protected by the Natural Zone of Expansion Doctrine. You get broad rights to a classification and even related classes, even though they are not explicitly listed on your application or registration.

Large companies like Nike® and Starbucks® literally have hundreds of trademark applications and registrations for their main brand names. As they launch new products and services they're back at trademark office. Nike® started with shoes, but a few years later, they applied to protect NIKE for athletic clothing, then a number of years later to protect NIKE as a brand for mobile applications for tracking running performance.

Your business must adopt the same approach. There are no shortcuts or tricks to get around the use in commerce requirements. Your business simply needs to file new applications for new products and services as they are launched over time.