Another unexpected impact of Covid-19 - on trademark goods and services
The impact of Covid-19 on pre-approvied goods and services lists for face masks
With the steep growth in manufacture and sale of Covid-19-related products, IP offices have proactively taken steps to clarify which classes these emerging goods and services fall into, depending on their specific use or purpose. Trademark registries across the globe have deleted pre-approved goods and services which were deemed too vague and added a bunch of new, more specific ones.
To take an obvious example, who would have thought that something like “face masks” would fall into so many different Nice classes! But depending on the nature of their use, “face masks” might be accurately classified into a number of different classes. We plugged this term into our “Draft Global Spec” tool to see what pre-approved terms pop up around the world:
It goes to show that applicants and their advisors need to think carefully when preparing the relevant trademark specifications to make sure they get the right protection - PPE manufacturers don’t want to end up with a registration covering cosmetic facial masks when their key products are more likely to be protective face masks for medical use.
Using IP Office pre-approved goods and services terms reduces the risk of examiner objections and potentially improves the level of protection that a trademark registration provides.
It’s commendable that IP offices are providing clarity to trademark applicants and their advisors by removing unclear or vague terms (eg. “facial masks”) from their pre-approved lists and adding more specific ones, such as “sanitary masks for virus isolation purposes”.
As an example, the Canadian IP Office has listed twelve new kinds of masks as pre-approved goods in Class 10:
Class
Pre-approved goods added
10
sanitary masks worn to cover the nose and mouth to prevent the spread of infection
10
sanitary masks for protection against viral infections
10
sanitary masks for virus isolation purposes
10
disposable sanitary masks for protection against viral infections
10
reusable sanitary masks worn to cover the nose and mouth to prevent the spread of infection
10
sanitary masks made of cloth for virus isolation purposes
10
protective breathing masks for protection against viruses and germs
10
sanitary face masks for protection against viral infections
10
cleanroom face masks
10
sanitary masks worn to cover the nose and mouth to prevent the spread of infection
10
personal protective face shields for medical use
10
sanitary face shields for protection against viruses and germs for personal use
The USPTO has deleted 11 previously-listed “face masks” or “facial masks” falling across four classes which are arguably not sufficiently specific:
Class
Pre-approved goods deleted
3
facial masks
9
facial masks
9
face-protection shields
9
protecting masks
9
facial masks
9
face-protection shields
9
protection masks
9
oxygen masks not for medical use
9
respiratory masks for non-medical purposes
25
knit face masks
28
paper face masks
In place of these, the following 34 more precise descriptions of types of face masks (spanning five classes) have been added:
Class
Pre-approved goods added
3
facial sheet masks for cosmetic use
3
cosmetic facial masks
9
protective face masks for the prevention of accident or injury
9
personal protective equipment (ppe), namely, safety goggles
9
personal protective equipment (ppe), namely, protective work gloves
9
respiratory masks for the prevention of accident or injury
9
protective industrial respiratory masks
9
face shields for protection against fire
9
protective industrial face shields
9
bullet-resistant face masks
9
safety equipment, namely, high altitude breathing apparatus
9
aviation oxygen masks
9
protective industrial face masks
9
bullet-resistant face shields
9
self-contained breathing apparatus (scba)
9
respirators for the prevention of accident or injury
9
protective industrial respirators
10
surgical scrub hats featuring fashion prints
10
fashion masks being sanitary masks for protection against viral infection
10
face shields for dental use
10
10 personal protective equipment (ppe), namely, face shields for use in the medical and dental fields
10
10 personal protective equipment (ppe), namely, masks for use by medical personnel
10
face shields for medical use
10
disposable sanitary masks for protection against viral infection
10
reusable sanitary masks for protection against viral infection
10
sanitary masks made of cloth for protection against viral infection
10
face coverings being sanitary masks for protection against viral infection
10
face covers being sanitary masks for protection against viral infection
10
sanitary masks for protection against viral infection
25
knit face masks being headwear
25
face coverings being niqabs
25
fashion masks being ski masks
28
paper face masks being playthings
28
face masks being playthings
For most of the world, the Coronavirus pandemic has been a sour experience, but as the saying goes, “When life gives you lemons, make lemonade.”
If you are applying for trademarks on behalf of a business which has seen an upturn in its products or services due to the Covid-19 pandemic, you may wish to check the updated lists of pre-approved goods and services in each country to ensure that their new trademark application doesn’t also turn into a lemon!
The Sortify.tm Attorney trademark productivity suite uses the power of artificial intelligence to deliver an up-to-date, country-specific list of pre-approved goods in a flash. You can easily check goods and services, prepare draft specifications and send them to your clients in a flash.