By Peter S. Sloane of Leason Ellis LLP
Peter Sloane is a Partner at Leason Ellis LLP in White Plains, New York. Mr. Sloane is a trademark and copyright attorney practicing domestic and international prosecution and litigation. He may be reached at email@example.com.
My article in the October 2010 edition of Intellectual Property Today, titled “Defining the Claims of U.S. Trademark Protection: The Metes and Bounds of Trademark Registration,” discussed the notice function that the identification of goods and services plays in U.S. trademark applications and registrations. The article posited that applicants should consider the role that the specification plays in alerting others, who come across the mark in trademark searching, about the true intended use of the mark, so as to increase the likelihood that those third parties will steer clear and avoid adopting a confusingly similar mark. But what is the role of prefatory language (that is, the wording preceding “namely”) in the identification of goods and services? While it, too, can serve such a notice function, it arguably does not have any legally cognizable function in defining the trademark claims. 1
Consider, for example, a trademark registration covering “toys, namely, dolls” in International Class 28. One might argue that the r...