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Two parts of trademark application must be at odds


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The two key components to a federal trademark application are:

  1. The mark; and
  2. The recitation of goods and services.

For example, if you’ve been to Home Depot or Lowes lately, you’ve likely seen the NEST® imagethermostat.  NEST is a federally registered mark of Nest Labs, Inc. in Palo Alto, California.   The components of the trademark for NEST are:

  1. NEST (a standard character claim…words only); and
  2. The description of the product: Climate control system consisting of a digital thermostat that automatically sets climate conditions based on prior and historical patterns of climate settings selected by users; climate control system consisting of a digital thermostat that can be controlled wirelessly from a remote location; software application for use on computers and hand-held devices to control climate and energy usage in homes and businesses from a remote location.

Notice that the word “nest” does not immediately convey a characteristic or objective of a digital thermostat.  It is, at best, slightly suggestive of a comfortable home (e.g., “nesting”).  The point is that the term “nest” services as a strong trademark because it does not describe the product itself. 

This is sometimes why a trademark attorney is at odds with (in our opinion….inexperienced) marketing departments.  Some poor marks for the same product as NEST would include DIGITAL THERMOSTAT, CLIMATE CONTROL, E-THERMOSTAT….all terms that are in the recitation (description) of the product itself.

We sometimes get the counter argument, “then how will people know what our product does?”  This is easy….you put the description next to your brand or on the product itself.  For example:


The “nest” brand is on the product itself.  However, for a service or some other product you cannot “affix” the trademark onto, you advertise the trademark and description together….but you make the trademark (brand) distinct.  For example, the Smith & Hopen brand is a federally registered trademark:


However, if you look at our presentation on our website, we have SMITH & HOPEN in larger letters with “Registered Patent Attorneys” underneath in a smaller font.


The brand is SMITH & HOPEN and the recitation is for legal services….namely, patent attorney work.

In conclusion, you can separate a strong brand with a descriptive or generic identification of the goods or services….just put them in different font sizes and on different lines.

© 1999- 2019 Smith and Hopen, P.A.  SMITH & HOPEN® and logo are federally registered trademarks.  Legal