Including an extensive list of products or services in your trademark application in the United States will entail the following risks:
- Higher filing fees:
Such fees may apply per class if any of the items are not included in the USPTO’s list of pre-approved items. Furthermore, an additional surcharge may be incurred if the free-text description exceeds 1,000 characters. - Increased likelihood of receiving objections:
It raises the probability of conflicts due to similarity with existing trademarks, as well as the likelihood that the USPTO will require modifications to the terms used in the description. Objections based on similarity are complicated to respond to, incur higher legal costs, and in many cases, have low chances of success. - Requirement to submit more evidence of use and associated costs:
While obtaining registration strictly requires submitting only one proof of use per class, you must have evidence of use (or intent to use, if you are filing on that basis) available for all items listed in the description as of the time of filing. The attorney handling your application may request these to support their statements before the USPTO. If more than three proofs of use per class are submitted, there will be additional fees charged for reviewing each extra item. - High risk of post-registration audits and associated costs:
Trademarks registered with many items per class are more likely to be audited by the USPTO during the 5th-year declaration submission. In such cases, evidence of use must be provided for all audited products or services. Responding to an audit involves a fee for each audited item and class, and if no valid evidence of use is available, you must additionally pay a USD 250 official fee per class to remove the item from the description and maintain the registration. - Difficulty defending the trademark against oppositions, cancellations, or third-party reexamination requests:
Including products or services that are not actually marketed can weaken your defense in any of these proceedings. Descriptions that are inconsistent or excessively broad may be used to argue that the application was filed in bad faith or without genuine intent to use as of the time of filing, increasing the risk of losing the registration. These proceedings in the U.S. can extend for years and generate substantial defense costs.
Given these considerations, it is recommended to carefully review the listed products or services and retain only those for which you are certain you can provide proof of commercialization in the United States.