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[Gitman]

Hello,

Can one make changes to an application after it's been submitted?  Can you add to the goods? Or edit any other fields?

Thanks.

[JSonnabend]

Certain changes are allowed, while others are not.  Ownership information generally cannot be changed, nor can the mark itself be substantively changed.  The G&S can be narrowed, but not broadened.

- Jeff

[Lyza]

Actually, Jeff, ownership information can be changed if it is in the nature of a change or correction of correspondence address.  

Within the TEAS electronic forms system, there is a section entitled, "Change of Address Forms."  Two forms are found within, the first being the form usually used by Applicant's/Registrant's counsel to change their correspondence information, and the second is to change or correct the owner's address.  However, within this second form, you can change or correct both the owner's address and counsel's address.  Thanks.

[Gitman]

Thanks for the reply's everyone, this forum is a great resource for information.

So, take a company like Dell, for instance.  When they started out, they were only selling computers, so if you check one of their first marks, it only lists Computers and Parts Therefor.

So, when they started expanding their G & S to televisions, cameras, etc. that had to register a new mark stating these new G & S, correct?  If they were to of listed these on the original application, they could have avoided registering a new mark, yes?

Can you list G & S that you intend to use the mark for?  Say, you are currently using the mark for just computers and parts therefor, but you have intentions of selling t.v.'s etc. in the future, can you list those on your initial application?

Thanks.

[Lyza]

Yes you can but you do not have forever to begin using the mark to sell your goods/services and you must have well in advance a pretty good idea of what you will be offering for sale.

You can file an intent-to-use application ("ITU") which does not require dates of first use and specimens proving use in interstate commerce.  In an ITU application, an applicant is stating not that they are using the mark to sell goods and/or services but that they "intend to sell" the goods/services under the mark in the future.  Remember, however, that additions to the goods and services may not made after filing, only deletions.

The time frame before you must prove use of a mark could be stretched out to five years.  Conventional wisdom is, of course, to get your goods/services out into interstate commerce as soon as possible, but there have been many acceptions to that rule, especially when research and development needs time.

Here is a rough timeline of the ITU process to the Principle Register (timeline in parentheses).  Could be shorter or longer depending upon many factors but this will give you an idea of how much time could be taken by those who must extend the process to registration to its fullest:

1.  File the ITU application (Filing date);
2.  Application is examined, and invariably, an initial refusal (office action, "OA") is issued (month 6 or 7) (if no office actions are issued, skip step 3 and the process is shortened by 6 months);
3.  Applicant has 6 months to respond to OA; if the entire 6 months is taken to respond, a year or more will have elapsed since filing (month 12 or 13);
4.  Notice of Publication is issued (month 14 or 15);
5.  The mark is published (month 16 or 17);
6.  30-day publication period ends (month 17 or 18);
7.  A Notice of Allowance ("NOA") is issued, assuming no oppositions are filed (month 18 or 19);
8.  By no later than six 6 months from the mailing date of the NOA, Applicant must file a Statement of Use ("SOU") and/or Request for Extension of Time to File Statement of Use ("ETSOU") proving use of the mark by the filing of specimens and the dates of first use anywhere and in interstate commerce (month 24 or 25);
9.  If the mark is not yet in use, Applicant may file up to five (5) ETSOUs of 6-months each before the SOU must be filed (possibly month 60 or 61);
10.  Approximately 1-3 months after the SOU is filed and accepted, the mark registers.

Again, this process could be shorter or longer, but an Applicant could in theory (and many have) take 5 years from the date of filing an ITU application to actually begin offering their goods/services to consumers or lose their early filing date.  An applicant can even be selling goods or services under the mark but stall the filing of an SOU anyway.  NOTE:  government filing fees of $150 PER CLASS must be paid with each ETSOU filed.  This means that stalling could get expensive.

In any event, talk to your lawyer about what you should do.  Also, PLEASE understand that ACCURATELY (and hopefully broadly) describing your goods/services and CORRECTLY filing a trademark registration application is not as simple as it may appear.  That's why God made intellectual property attorneys.  They can actually save you money by doing it right the first time.  Hope this helps.

[Gitman]

Hello Lyza,

Thank for such a thorough reply.  Well, we are using the mark in commerce for computers and parts therefor, however, within the year we will be also selling our own brand of televisions, media centers, portable audio players etc.  

So, I am wondering, if we can add these other G & S to our inital application, or do we have to present a specimen for each G & S we list?

I wouldn't think that a company like HP who has a list like this:

Portable media players, namely, electronic devices for recording, organizing, transmitting, manipulating and reviewing text, image and audio files; computer software for use in organizing, transmitting, manipulating and reviewing text, image and audio files; digital satellite receivers; digital terrestrial television and radio receivers; personal digital video recorders and players; television and radio receivers; compact disc recorders and players; video disc recorders and players; optical disc recorders and players; digital audio tape recorders and players; computer communication media servers and computer hardware, namely, computer communication media clients; computer hardware; multimedia keyboards; remote controls for personal computers, television, digital projectors, DVDs, radios, portable media players, stereo, VCRs, computer hardware and computer peripherals; televisions; flat panel television and display monitors; video projector; digital cameras; television tuners; digital video cameras; loudspeakers; speakers for personal computers; microphones; headphones; video amplifiers; video tuners; audio switching boxes; audio noise suppressors; optical amplifiers and audio and video signal decoders; juke boxes; computer software for creating and inscribing text and images onto optical recording media; recordable and rewritable optical media, namely, blank CDs and DVDs; recordable and rewritable CDs and DVDs, namely, blank compact disks and blank DVDs; CD and DVD drives and writers; computer disk drives; optical disk drives; computer imaging software for use in uploading, transferring, distributing, manipulating, printing, developing and editing digital images

would have to submit specimens of actual use in commerce for each item listed.  Is this the case?  That is what I am trying to figure out.

Thanks.

[Lyza]

Hi,

No, no.  You misunderstood what I wrote and I think I did mention that you cannot add goods or services to an existing application.  For protection of additional goods or services, you must file a new application.  Once filed, you can delete goods/services you don't want but you can't add more.

There are many ways to skin-the-PTO-cat, so to speak, which is why it is better to let an IP professional do the skinning for you.

[Lyza]

Sorry, I missed the second part of your question.

Technically, an applicant must be able to prove use of the mark for everything they have listed in each class of goods/services, but the reality is that only one acceptable specimen is necessary for filing for each class.  If only one of the goods in a single class of multiple goods is shown in a single specimen, and that specimen meets acceptability requirements, then all of the goods mentioned may be approved for registration.

However, if a third party challenges your right to own the mark at the TTAB and at some point during litigation you are asked to show use of the mark for ALL the goods/services mentioned in an application or registration, you better be able to do it.  Remember that in an application filing, you are swearing under oath that to your knowledge only you have the right to the mark because you are, in fact, using the mark to sell ALL OF THE GOODS/SERVICES LISTED.  That oath should not be taken lightly.

And, yes.  I would venture a guess that large corporations CAN prove use of their marks for all the goods/services listed in their registrations.

[Gitman]

Another great post Lyza, Thanks!  I guess we will just put Computers and parts therefor...for now.  

[JSonnabend]

Lyza, you've been very thorough in your responses to the OP.  I'll just clarify two points.  First, ownership information cannot ordinarily be changed, but correspondence addresses can.  That's an important distinction.

Second, it is inaccurate to say the G&S can only altered by deletion after the initial filing.  The G&S generally can be amended in any manner that narrows the G&S.  Deletions certainly fall within this mandate, but so too do many alterations.

Finally, why do you say that "invariably" applications are initially rejected?

- Jeff

[Lyza]

Hi Jeff,

Regarding the change of ownership address info being the only thing allowed, that's what I thought I said.  If I was unclear, thanks for clarifying.  See, Gitman, this is why an attorney is always a good thing to have.

I used "invariably" because office actions issue more often than they don't.  In addition, a friend at the PTO once told me that examiners are actually given points for the amount of refusals they can issue, therefore, my statement.  Of course, there are always exceptions, especially since the advent and use of TEASPlus, and if asked, I usually suggest that an attorney say that an applicant should expect to receive one.  If no objections are lodged and the application goes straight through to publication, the attorney is a hero.  That's all.  Was I incorrect?  Thanks.

[Gitman]

Hey,

What a second.  I'm not sure what you are talking about.  Are you saying that the majority of trademarks submitted are refused?  Are you only talking about, "Intent to use," marks or are you also talking about trademarks that are being registered as already in use with specimen?

Thanks.

[Isaac]

The point "2855" makes is that most trademark applications do result in registration without an office action denying the registration or requiring some action from the applicant prior to registration.

Jeff correctly questions whether "invariably" properly describes something that happens even a majority of  the time.   Invariably means always.

[Lyza]

You are right.  Bad choice of words.  Thanks, Isaac.

[Gitman]

Hello

What do you mean by this:

2.  Application is examined, and invariably, an initial refusal (office action, "OA") is issued (month 6 or 7) (if no office actions are issued, skip step 3 and the process is shortened by 6 months);

Invariably, an initial refusal?  You are saying this is how the trademark process works?  I am utterly confused.