Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[mia077]

I need to broaden the description of goods for a registered trademark. (Adding more goods to the current class)  I know I cannot amend the registered mark, thus I will have to file a new application.  Do I have to cancel/abandon the registered trademark first before filing the new application?

Thanks

[JSonnabend]

Generally speaking, you do not need to expressly abandon the previous registration based on the cursory facts you have provided.

- Jeff

[mia077]

I guess I'm having a hard time understand how the same mark, in the same class, with the same applicant, but with a slightly different wording of goods can get through the trademark examination process.  I think I am thinking in patent terms.  I have not seen anything in the TMEP addressing applications for the same mark with the same applicant.

[JSonnabend]

Why not?  What does it get the registrant?  If the ID is identical or nearly so, that may be one thing.  If the goods have changed, why can't a TM owner obtain a registration for those new goods?

- Jeff

[mia077]

So, for example, say the mark is:

MEOW - IC 028: Pet toys containing catnip

To broaden I would file a new application, with a new description of goods (not including "Pet toys containing catnip")

MEOW - IC 028: Pet toys made of rope


or, file an application with both

MEOW - IC 028: Pet toys containing catnip and Pet toys made of rope


Thanks for helping me understand this.

[JSonnabend]

Let's take it from this angle.  What are you trying to accomplish?

- Jeff

[mia077]

I would like to expand my coverage.  The original registration included only one common commercial name in the description of goods.  So for example:

IC 028: Pet toys, namely, toys containing catnip.

Now, I want to expand on that, for not only toys containing catnip but also, toys made of rope, toys made of furry things, toys in the shape of balls and so on.   

So, I'm trying to figure out if I can file a new application including all of the common commercial names.  Or a new application with just the new common commercial names, not what is included with the original registered mark.

Does that make sense?

[trw]

mia077 -- I think that you might be assuming that there is something like obviousness double patenting in trademark prosecution.  I don't think that's the case.  I did some quick searching in TESS and came up with these two issued marks:

Word Mark: AMAZON.COM
G & S: RETAIL DEPARTMENT STORES (in international class 035)
Registration Number: 2559936

Word Mark: AMAZON.COM
G & S: retail department stores, retail on-line department stores; retail convenience stores; on-line retail convenience stores (in international class 035)
Registration Number: 2789101

[JSonnabend]

I am concerned about your thoughts to "expand my coverage".  Trademark registrations don't quite work that way.  If you are seeking to better describe your goods, or to cover goods currently covered by the mark but not included in the prior registration, then by all means, file a new application.

If you are trying to protect goods you don't currently provide under the mark, then you are not understanding how registrations work.

- Jeff

[mia077]

trw - Thank you for the example.  I think I do have the patent issues on my mind.

Jeff - Thank you for your help.  Perhaps I should not have used the term "expand my coverage."  We are trying to cover goods currently being used w/ the mark but these goods were not included in the prior registration.