Selecting Goods & Services in a U.S. Trademark Application: How to Avoid Additional USPTO Fees and Office Actions

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Selecting Goods & Services in a U.S. Trademark Application: How to Avoid Additional USPTO Fees and Office Actions

An essential guide for businesses, startups, software companies, and brand owners filing trademarks in the United States.

Introduction

One of the most overlooked yet critical aspects of filing a U.S. trademark application is the identification of goods and services. Many applicants spend significant time choosing the perfect trademark but pay little attention to how their products or services are described in the application.

A poorly drafted identification can lead to:

  • Additional USPTO official fees
  • Office Actions
  • Delays in registration
  • Narrower or unclear protection
  • Increased attorney costs

With the USPTO’s revised fee structure introduced in January 2025, selecting the correct identification has become even more important.

This article explains everything applicants should know before filing a U.S. trademark application.

What is “Identification of Goods and Services”?

Every trademark application must specify exactly what products or services the trademark will be used for.

For example:

Instead of merely stating

Software

the USPTO expects something much more specific, such as:

Downloadable computer software for project management.

or

Downloadable mobile application for fitness tracking.

The description should allow anyone reading the trademark register to understand precisely what goods or services are covered.

Why is this Important?

The identification determines:

  • the legal scope of your trademark protection
  • classification of goods/services
  • official filing fees
  • likelihood of objections
  • future enforceability

Changing the identification after filing is very limited.

The USPTO allows applicants to narrow the identification later but generally does not allow expanding it beyond the original wording.

Therefore, getting it right from the beginning is essential.

The USPTO ID Manual

To make trademark filings more consistent, the USPTO maintains an official database known as the:

Acceptable Identification of Goods and Services Manual (ID Manual)

It contains thousands of pre-approved descriptions covering almost every industry.

https://idm-tmng.uspto.gov

Examples include:

  • Downloadable computer software for database management
  • Business consulting services
  • Clothing, namely, shirts
  • Medical diagnostic apparatus
  • Legal services

Each entry has already been accepted by the USPTO.

Why Use the USPTO ID Manual?

Using standardized descriptions offers several advantages.

1. Faster Examination

Examining attorneys immediately recognize the wording.

2. Fewer Office Actions

There is much less chance that the identification will be considered indefinite or unclear.

3. Lower Official Fees

Under the USPTO’s current fee schedule, applications using only approved ID Manual wording generally avoid additional identification-related fees.

4. Greater Consistency

Standard wording creates uniformity across trademark registrations.

What Happens When You Use Custom Wording?

Many businesses—particularly software companies, AI startups, biotechnology firms, healthcare platforms, and fintech companies—offer products that do not fit neatly within existing ID Manual descriptions.

For example, consider a healthcare mobile application offering:

  • AI medical chatbot
  • Baby cry detection
  • Vaccination tracking
  • Pregnancy monitoring
  • Menstrual cycle tracking
  • Prescription reminders
  • Lab report storage

There may not be one exact standard description covering all these features.

In such situations, attorneys often prepare custom wording.

This is perfectly acceptable—but applicants should understand the consequences.

The New USPTO Fee Rule

Beginning in 2025, the USPTO introduced additional fees for applications using free-form identification instead of selecting approved descriptions from the ID Manual.

If the application contains customized identification rather than standard ID Manual wording, the USPTO may require an additional official fee of USD 200 per class.

This fee is charged by the USPTO—not by the attorney.

Why Does the USPTO Charge This Fee?

The USPTO encourages applicants to use standardized language because it:

  • reduces examination time
  • improves database consistency
  • decreases ambiguity
  • simplifies searching
  • reduces examiner workload

Custom wording requires additional review by the examining attorney.

Example 1 – Standard Identification

Suppose a client develops accounting software.

The ID Manual already contains:

Downloadable computer software for accounting.

Selecting this wording usually avoids additional identification fees.

Example 2 – Custom Identification

Now suppose an AI company develops software for:

  • patent drafting
  • AI invention analysis
  • commercialization scoring
  • investor matching
  • patent licensing

No standard ID Manual entry may accurately describe all these functions.

The attorney may need to prepare wording such as:

Downloadable software using artificial intelligence for patent drafting, invention evaluation, commercialization analysis and licensing management.

Although this description is more accurate, it may trigger the USPTO’s additional identification fee.

Example 3 – Healthcare Application

Imagine a mobile healthcare application providing:

  • vaccination reminders
  • menstrual tracking
  • baby development monitoring
  • BMI calculator
  • AI medical chatbot
  • prescription reminders

The attorney may combine multiple approved descriptions where possible.

However, unique AI functionality may require custom wording.

Again, an additional official fee may become applicable.

Does Custom Wording Mean the Attorney Made a Mistake?

Absolutely not.

Many applicants believe:

“We received an additional fee, so someone filed the application incorrectly.”

This is not necessarily true.

There are three common situations.

Situation A – Standard wording was available

If identical wording already existed in the USPTO ID Manual and the attorney unnecessarily created custom wording, the additional fee might have been avoidable.

Situation B – Custom wording was necessary

Many modern technologies simply do not fit existing ID Manual descriptions.

In these cases, custom wording provides better legal protection.

Paying the additional fee may be worthwhile.

Situation C – Strategic Decision

Sometimes attorneys intentionally draft broader or more accurate descriptions to protect the client’s actual business instead of forcing the goods into an inaccurate standard description.

This is often the correct legal strategy.

Can the Fee Be Avoided Later?

Usually, no.

If the application was filed using free-form identification that triggers the fee, the USPTO generally requires payment even if the wording is later amended during prosecution.

Therefore, decisions made before filing are extremely important.

Office Actions Related to Identification

One of the most common Office Actions issued by the USPTO relates to:

  • indefinite wording
  • overly broad wording
  • multiple classes
  • incorrect classification
  • punctuation
  • spelling mistakes
  • unclear software descriptions

For example, the USPTO may object to descriptions such as:

Software

because it is too broad.

Instead, the applicant may need to specify:

Downloadable software for inventory management.

Multiple Classes

Many products include goods and services belonging to different trademark classes.

For example:

ProductClass
Downloadable SoftwareClass 9
Software as a Service (SaaS)Class 42
Medical ServicesClass 44
Business Management ServicesClass 35

Failing to classify goods correctly may result in additional official fees and Office Actions.

Importance of Working with an Experienced Trademark Professional

Drafting identification is much more than copying words from the internet.

A trademark professional evaluates:

  • current business
  • future expansion
  • international filing strategy
  • classification
  • enforcement considerations
  • available ID Manual entries
  • possible official fee implications

The objective is to obtain the broadest legally sustainable protection while minimizing unnecessary costs.

Best Practices Before Filing

Before submitting a U.S. trademark application, applicants should ensure that:

  • Every product or service has been identified clearly.
  • Existing USPTO ID Manual wording has been considered.
  • Only necessary custom wording has been used.
  • All applicable trademark classes have been identified.
  • Possible additional USPTO fees have been explained in advance.
  • The identification accurately reflects the applicant’s business.

Frequently Asked Questions

Is the USD 200 an attorney’s fee?

No.

It is an official USPTO fee applicable in certain circumstances under the current filing rules.

Can custom wording be used?

Yes.

Many applications require custom wording to accurately describe innovative products and services.

Should applicants always avoid custom wording?

Not necessarily.

Using only standard wording may sometimes provide inadequate protection.

Choosing between standard and custom wording is a legal and strategic decision.

Can changing the wording later remove the fee?

Generally, no. Once the application is filed in a manner that triggers the fee, the additional official fee remains payable.

Practical Checklist Before Filing

Ask your trademark attorney these questions before filing:

  • Can my goods/services be selected entirely from the USPTO ID Manual?
  • Will any custom wording be required?
  • Will custom wording trigger additional USPTO official fees?
  • Are there alternative standard descriptions that adequately protect my business?
  • How many trademark classes are required?
  • What are the total official filing fees, including any possible surcharges?
  • Does the wording adequately protect future expansion of my products and services?

Conclusion

Choosing the correct identification of goods and services is one of the most important decisions in a U.S. trademark application. While standardized wording from the USPTO ID Manual can help reduce costs and streamline examination, innovative businesses often require carefully drafted custom descriptions to accurately protect their brands.

Rather than focusing solely on avoiding an additional official fee, applicants should consider the broader objective: obtaining trademark protection that truly reflects their products and services while balancing cost, clarity, and legal enforceability.

A well-planned trademark application—prepared after reviewing the USPTO ID Manual, evaluating the need for custom wording, and understanding the associated official fees—can save considerable time, expense, and uncertainty during prosecution.

Prasad Karhad
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