New Goods. New Services.
When it comes to building a brand, there are few things more important than establishing a strong trademark, whether registered or not. As we’ve mentioned previously in our blogs, a trademark is a unique symbol, phrase, word(s), or design that distinguishes your business from others in the marketplace. It helps customers recognize your products or services and builds trust and loyalty over time. But what happens when you want to expand your offerings? How do you add goods or services to your registered trademark without diluting its value?
In viewing our prior postings, you may have wondered why global brands have multiple registrations for seemingly the same mark. The key difference is the goods or services identified within the international class and potentially different international classes.
Nike
Adidas
Starbucks
First and foremost, as a brand owner, it's important to understand that adding goods or services to your trademark can be a complex process. It's not as simple as slapping your logo on a new product and calling it a day. Before you start, you'll need to do some research to determine whether your new offering is compatible with your existing brand. Ask yourself: Does this product or service align with my brand's values and mission? Will it appeal to my target audience? If the answer to either of these questions is "no," you may need to rethink your strategy.
Assuming you've done your due diligence and determined that adding a new product or service is the right move for your business, the next step is to update your trademark registration(s). This is important because your trademark only protects the goods and services that are listed in your registration. If you add a new offering without updating your registration, you may not be able to enforce your trademark rights if someone else tries to use a similar mark in connection with that product or service.
Important to note is that once a mark is registered, you can not add a good or service to the registration. A new application will need to be filed to cover the new goods or services.
Under 37 C.F.R. §2.71(a), an applicant may amend "to clarify" the identification of goods and/or services. The applicant may clarify an identification that is indefinite or overly broad, to identify goods and/or services that are within the scope of the goods and services in the identification. As noted in TMEP §1402.06, filing an application for registration on the Principal Register establishes a constructive date of first use in commerce, contingent on issuance of the registration. 15 U.S.C. §1057(c). Accordingly, the applicant may not expand those rights through an amendment that broadens the identification of goods and/or services.
Thus, the applicant may amend from the more general to the specific, but the applicant may not amend from the specific to the more general. The scope of the goods/services identified initially, or as limited by an express amendment, establishes the outer limit for permissible amendments. See TMEP §§1402.07 et seq.
In an application under §1 or §44 of the Trademark Act, classification may provide some guidance in determining whether an amendment exceeds the scope of the goods/services identified initially, but it is not controlling. In an application under §1 or §44, the examining attorney may suggest and accept amendments to the identification that result in a change of class, if the amended identification does not exceed the scope of the original identification.
Example - If an applicant has erroneously identified its goods and services as "menus" but, in fact, the applicant intends to register the mark for restaurant services, the applicant may not amend the identification of goods to "restaurant services." In such a case, the original identification, which is specific and narrow in scope, may not be expanded to services beyond the scope of that identification.
Example - If an applicant has erroneously identified its goods and services as "bottles for salad dressing" but, in fact, the applicant intends to register the mark for salad dressing, the applicant may not amend the identification to "salad dressing." However, if an applicant identifies its goods and services as "bottles of salad dressing," the applicant may amend the identification to "salad dressing." As above, where the original language is specific and narrow in scope, the identification may not be expanded to goods beyond that scope.
Example - If an applicant has erroneously identified its goods and services either as "packaging and labels" or as "packaging and labels for toys" but, in fact, the applicant intends to register the mark for toys, the applicant may not amend to correct the identification, because "toys" is not within the scope of the initial identification.
In a §66(a) application, classification is assigned by the IB and cannot be changed. 37 C.F.R. §2.85(d). See TMEP §§1401.03(d), 1402.01(c), and 1904.02(b) and (c) regarding §66(a) applications.
TMEP §1402.06(b)
As with the initial filing you'll need to file what's known as a "specimen" with the United States Patent and Trademark Office (USPTO) to show use of the mark. A specimen is simply a sample of how you're using your trademark in connection with the new product or service. This means showing how you incorporate your logo, tagline, or other identifying mark(s) into the packaging, advertising, and marketing materials for the new offering. For example, if you're adding a new line of clothing to your existing brand, you might submit a photo of a t-shirt with your properly placed logo on it as your specimen.
All in all, adding goods or services to your trademark can be a smart and financially advantageous move for businesses looking to expand their offerings. But it's important to approach this process thoughtfully and strategically. Do your research, use your existing trademark consistently, consider how your new offering fits into your overall brand strategy, and contact your favorite trademark attorney. If you need assistance with your intellectual property portfolio, give us a call at 1-888-752-2629 or schedule a consultation online. We’d be happy to assist you in securing your brand.