Print

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

[bluesky]

Quick ?.  Say you filed an ITU Trademark application for let's say FROOT LOOPS on Jan. 1 for services, i.e. peeling fruit.  

Let's say this week (Jan. 8th) you want to also protect the mark FROOT LOOPS for the peeled fruit product with an ITU application.

Would it be better to amend the original application to add the other class? or to file a new application?  Please assume the priority difference between Jan 1 and Jan 8 is insignificant.

In the above, you may also assume that the applicant is relatively certain to someday offer the services in commerce, but not necessarily the product.

Thanks!

[lyza2855]

You cannot add goods or services to an existing application, no matter ITU or use-based.  You can only modify [read "change" rather than "add"] or delete goods or services.  

Your client would have to file a new application to request registration protection of the mark for the offering of the additional goods.

[bluesky]

Thanks for the reply.  Given these facts, is there any way the former application could be used as a basis of refusal for the latter?

[lyza2855]

Yes, but the examiner, seeing the similarity of owners, will undoubtedly just ask for confirmation in an office action response that the first application is owned by the same company/individual as the instant application.

You can try to offset that objection by including in your initial filing a statement in "Additional Statements/Miscellaneous" to the effect that the instant applicant is the owner of Application Serial No. _________.  Understand that making such a statement in the initial filing may ward off an office action but ownership of the 1st won't be recorded as a parent for the second.  I believe that citing priority/seniority of another mark is only possible if that mark has registered.

An attorney will probably confirm or correct what I've told you.  Thanks.

[lyza2855]

To also clarify my statement regarding the ability to modify the goods/services in an existing application, any changes made to the description of g/s cannot be material.  You can't have "automobile steering wheels" listed in the original filing and then request the goods changed or modified to read "automobile horns".  That is my understanding.  Again, an attorney will hopefully confirm, clarify or correct.  Thanks.

[islaah]

Lyza... though i would not open a new thread and ask your suggestion in this one itself.

My organization is willing to sponser me for an IP course in UK. We are currently based in Dubai in middle east. Could you please suggest one that should be a good career option.

To give a fair idea of what I am looking at, I was contemplating the September course at Intellectual Property Law at Queen Mary International.

[lyza2855]

Unfortunately, I know nothing of schooling outside the U.S. other than in Canada.  Canadians are able to sit a bar exam to become a trademark agent, a position not offered in the U.S.  Possibly this career path is also offered in the UK.

I would think that any schooling which specializes in intellectual property would be helpful in pursuing an IP career.  Have you tried to contact a barrister in the UK to advise you?  Perhaps he/she would have suggestions.  Someone else on this forum may know more.  Good luck.