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Author Topic: New class for previously registered mark  (Read 450 times)

starman

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New class for previously registered mark
« on: 07-05-11 at 08:38 am »

I'd like to file a new class for a previously registered mark  (formerly, IC009-- new IC015). 

In the first registration, the mark was granted without office action.

Since registration, the mark has been linked to the product and source in some articles in prominent publications.

How should I go about registering this new class--  should I provide any evidence?  should I just file a new application with the new class and claim a "Prior Registration" in the "Additional Statements" area and forget about providing any evidence- beyond our specimen of the mark?

Thanks

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OMG IP

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Re: New class for previously registered mark
« Reply #1 on: 07-05-11 at 08:55 am »

The IC is not the main concern.  As long as you are operating in commerce in conformance with the description of goods/services, I wouldn't be so worried about switching IC's.

If you feel the description of goods/services is not entirely accurate or applicable, or you want to add description, it is probably easier to file a 2nd application.
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DEBOER IP
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John M. DeBoer

starman

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Re: New class for previously registered mark
« Reply #2 on: 07-05-11 at 09:08 am »

Thanks for the response.

I am operating in conformance with the description, so that should be ok.  The description of the original is fairly broad, but worded such that I'm not sure one would immediately see the connection to the other IC unless they saw the product.  If they see the product, that the applicability to both IC's would be obvious.  For this reason, I was thinking adding the new, complementary IC.  Does this make sense? 

If I file a new application- are there any steps I should take to refer to the previous registration and even go as far as providing screenshots of the some of the prominent articles?  My goal is to get the new registration through as quickly as possible.

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JSonnabend

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Re: New class for previously registered mark
« Reply #3 on: 07-06-11 at 11:34 am »

Something isn't quite making sense here.  If the original ID doesn't properly describe the goods on which the mark is used, the registration may be of limited or no value.  Short of having an attorney review the matter (which is what you really should do), you should carefully review the ID in your registration and, if the ID is not sufficiently accurate, then file a new application.

- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
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JSonnabend@SonnabendLaw.com
 



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