It Can’t Be Trademarked! An Overview of Goods in Trade and Use for the Benefit of Others

A trademark registration provides protection for the goods and/or services provided in connection with the mark. An early question your trademark attorney will ask is “What are the goods and services you intend to protect?”

In an earnest attempt to include any perceivable good or service that could bear the mark, Applicants may unknowingly include goods or services that are not subject to trademark protection. This also happens frequently with foreign trademark applications that serve as a priority basis for a U.S. application, likely because most jurisdictions outside of the U.S. do not require use to secure a trademark registration.

To be protectable, a trademark must be used in connection with “goods in trade” or “services provided for the benefit of others.” Goods and services that do not meet these standards cannot be protected under U.S. trademark law.

Goods in Trade

To be eligible for protection, a trademark must be used on “goods in trade”. Arguably, nearly any good can be a good in trade. The question is one of perspective, whether the Applicant’s association with the specific good meets this criteria. The deciding question is, is the good independent or merely incidental? The factors[1] to be considered are as follows:

1) Is the good a conduit or a necessary tool that is only useful when used with the good/service?

2) Is the good so closely and inextricably tied to and associated with the good/service and has no independent purpose?

3) The good is not sold separately and is not independently valuable apart from the goods/services

Common Examples

Products that are not goods in trade can still bear the trademark. However, these goods are not a separate item that is sold/given/provided by the trademark owner and are therefore not subject to trademark protection. They should therefore not be included in the identification of goods. The most common examples of goods not in trade include letterhead, invoices, reports, product packaging, business forms, and business cards. These products often bear the trademark of their respective business. For example, a dentist that has their trademark on their business card. However, a business card is not a good in trade with respect to a dental practice, since it does not meet any of the factors. This does not mean that these aforementioned products can never be “a good in trade”. The determination is from the perspective of the producer. For example, to VistaPrint, a manufacturer of business cards, the business cards are a “good in trade.” To an attorney, a form with the firm name is not a “good in trade,” but it is to Bloomberg, a manufacturer and seller of legal forms. Similarly, Grey Goose, a producer of alcohol would not be able to claim trademark protection for Grey Goose on “bottles,” unless it independently produced glass bottles for other companies, as an integral part of its business.

Promotional Products: An Exception

The most common exception to the requirement of “goods in trade” are promotional products or collateral products that bear the name of the business. The intended purpose of these goods is to promote the company. Typically these items (commonly referred to as shwag), may include writing instruments, toys, office paraphernalia, and t-shirts, that are branded with the business’s trademark. While these types of products are not those typically sold or provided by the trademark owner, they are still legitimate goods in trade.

For example, a bank that gives away pens, piggy banks and t-shirts bearing the name of the bank could file for a trademark covering pens, piggy banks and t-shirts. These products are considered to have a utilitarian function and purpose in and of itself. In short, promotional/collateral goods can be goods in trade, even though these products are not the primary function of the business, but are sold or provided strictly to promote it.

Common Examples: Not Goods in Trade

[1] TMEP 1202.06

Services for the Benefit of Others
To be registrable, a service must be for the benefit of someone other than the Applicant. A service that is routine or expected provided with the sale of a company’s own goods is not subject to trademark registration as a service.

The central question is “Who primarily benefits from the activity for which registration is sought?” If the service is for the benefit of others, then it may be trademarked. An incidental benefit to the trademark owner is not fatal to this inquiry.  If the service is primarily for the benefit of the applicant, then it may not be trademarked, even if others may derive an incidental benefit.

The test for services to determine if they are for the benefit of others[1]:
1) A service must be a real activity;
2) A service must be performed for the benefit of someone, or to the order of someone that is not the Applicant;

3) The activity is not done in connection with the sale of the Applicant’s goods or the performance of another service;

Common Examples: Services Not for the Benefit of Others

[1] 1301.01(a)

When working with a trademark attorney, it is important to carefully consider the identification of goods and services. While there is no explicit penalty in including goods not in trade, or services not for the benefit of others in the application, their inclusion may trigger an unnecessary office action. Otherwise, goods or services that are not in use can make the application vulnerable to opposition and third party cancellation. Finally, it is not possible to maintain a trademark for goods not in trade, or services not for the benefit of others.