Smart business owners often pivot, expand, and shift focus for their business in response to market demand, new trends, and new opportunities. If you are one of these business owners, and you own a registered trademark, you might have questions about how your existing trademark covers these new business opportunities.
This article explores how and when to consider filing additional trademark applications to expand the scope of protection for the registered trademark, but first a few basics:
Can you expand or add goods or services to a pending trademark application?
No, you can never add goods or services after filing a trademark application that would expand the scope of protection.
You cannot expand the scope of protection to be broader than the original filing. From the USPTO:
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. 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.
Can you add goods or services to a registered trademark?
No, you can never add goods or services to a registered trademark that would expand the zone of protection. You have to make a new trademark filing which will be reexamined by a USPTO examining attorney.
Why? Trademark applications and registrations are examined and approved based on the specific goods and services listed in the application. Small changes in goods and services could make a drastic impact on the examination of the application. Therefore, if any good or service, no matter how similar to the original, would expand the goods and services to include things not covered under the original examination, it could, for example, be overlapping with someone else’s prior existing rights.
Now that we’ve established those basics, let’s discuss strategy.
1. Make sure you have protected your business’ core goods and services before considering expanding trademark protection.
The trademark registration process begins with identifying the appropriate goods and services your mark will represent in the trademark application. This is called an “identification,” and it is important as the USPTO requires an accurate description of what the trademark will protect. By their very nature, trademarks exist to distinguish one competitor’s goods and services from another and ensure consistent consumer brand recognition. By identifying these goods and services, you are “staking your claim” with the USPTO for protection on those goods and services.
To help classify these goods and services the USPTO has a system of “International Classes.” These classes are the groupings that a brand’s goods or services fall into and range from specific clothing items such as t-shirts in class 025, to non-downloadable website services in class 042. There are 48 different classes and while they are helpful organizational tools, the goods, and services listed in a registration will always be more impactful than the class it is filed in,
With this in mind, the trademark application process is timely and often results in confusion when selecting the appropriate class for the goods or services being offered. An experienced trademark attorney can help guide a brand owner in selecting the most beneficial classes for their products or services.
If successful, this process results in a registered trademark for your brand.
2. My company is expanding into new industries or offering new goods and services – are these protected by my original application?
What happens when you, the brand owner, want to add additional classes to your already registered mark? This question is often asked when a company expands or begins offering additional goods and services. This is a natural process in operating a successful business, but from a trademark perspective is this addition feasible?
As it stands, once you apply for trademark registration with the United States Patent and Trademark Office, you cannot add any goods and services or expand the scope of the goods and services in your application. If you would like to expand the scope, you must file a new application for those goods and services.
Here are some frequently asked questions we often answer regarding how, and when, to consider a new trademark filing:
Does your current application only protect the exact items you originally filed for?
Yes, it technically only covers those specific items, but it also protects against the registration (and use) of other confusingly similar marks for related goods and services. Trademark law anticipates that trademark owners will expand in the “natural zone of expansion” for the business, so even if you don’t register every single product or service you offer, you still have a good amount of protection for your core goods and services.
Do you need to register every single item and service you provide?
No, it would be nearly impossible to predict every good or service your business might offer. Some companies sell seasonal items or experiment with new products only to remove them six months later. Very few companies own a registration in every possible trademark classification they could qualify for. However, if those goods or services will be a major part of the company moving forward (or might be) then it is important to make the necessary filings through additional trademark applications and registrations.
What this means for you, is even after obtaining a registration you will have to start the application process from the beginning, for any additional goods or services you wish to add. As of October 2022, the estimated turnaround for the USPTO to review and decide on an application is around 11 months. This time period can set your business and marketing strategy back during its crucial stages, so it is important to be as accurate as possible during your initial application filing.