Is It Possible To Add Goods and Services To A Trademark Registration?

Trademark registration is an essential process in branding since it grants businesses the legal rights to use certain words, symbols, or logos related to their products or services. 

Trademarking a mark through the USPTO gives business owners the legal right to stop other parties from using similar marks that can cause confusion or dilution of the business’s brand.

When it comes to businesses, there is a tendency to diversify, especially by developing new products and or services. Trademark owners may then ask the question, of whether they can incorporate these new goods and services into the existing trademark registration so as to be protected without applying anew.

This leads to an important question: can one register additional goods and services to an existing trademark?

Why Would You Want to Add Goods or Services to Your New Trademark Application?

Companies grow and change over time, and one of the most common growth strategies is horizontal expansion, where the business moves to other markets, or vertical expansion, where the business adds other related products and services to its portfolio in response to the consumers’ needs. 

This increase in the number of products can result in the expansion of trademark protection in order to cover the brand’s entire products.

For instance, an organization that first sought a trademark for a series of clothes may later want to expand its line and produce footwear or accessories. In another case, a tech company founded to work in software may then diversify into the fabrication of smart devices or anything related to hardware. 

The new products or services are usually associated with the company’s trademark, and safeguarding these new products or services becomes relevant to the consistency of the trademark and to prevent possible infringement.

It is useful to broaden the protection of trademarks to cover similar marks used by competitors on new products that can create confusion or weaken a trademark. 

It means that businesses can keep their brands unique, consistent, and safe while they expand their operations and take more products and services to the market.

Is It Possible to Include Additional Goods or Services in an Existing Trademark Registration?

The USPTO has the rule that trademark owners cannot just extend the list of goods or services that are protected by the registered trademark.

Trademark becomes frozen in as far as the list of goods and services to which it applies once it is registered. This means that if your business is to enter a new market or bring new products to the market, the current registration will not cover these products or markets.

This limitation is due to the fact that trademark protection is granted based on the goods and services on the application at the time when the application was filed. 

Every registration is linked to certain classes of a product or service, and the extension will inevitably entail a reconsideration of the mark’s differentiation and the likelihood of confusion within the new sphere.

In the case where the owner wishes to protect a trademark on newly introduced goods or services, the only option is to apply for a new trademark. 

Application for the Registration of New Additional Goods or Services

Your trademark protection will be useful when your business expands to new markets or introduces new products or services because you will be required to register them with the United States Patent and Trademark Office (USPTO). 

This process ensures that your brand does not end up exposed in relation to the additional goods or services, it raises the question of how long it takes to register with the US copyright office.

Procedures for Submitting a New Trademark Application

Firstly, decide which new product or service your business will provide. When filling out this application it is pertinent to be clear on what is to be protected as this will determine the rest.

Application requirements for filing a new trademark application are:

Search Trademarks

Take time to do a trademark search to avoid any conflict between your desired mark and a trademark already registered in the new goods or services category. 

This is because rejections or legal issues might arise during the process.

Decide the Right Category

Trademarks are also grouped in classes depending on the type of good or service that is being offered by the company or organization that seeks to register the trademark in the USPTO. 

In the case of new offerings, you are going to need to choose the right classification that is relevant to your business. 

Finally, pay the application fee and submit the application.

Once the correct classification is chosen, fill out the application through the USPTO’s Trademark Electronic Application System (TEAS). 

Besides, you should include in the application a specimen which is an example of how the mark is used in commerce for the new goods or services.

Pay the Required Fees

The fees also differ depending on the number of classes for which you intend to apply. In case your new goods and services fall under different classes, you will be required to pay for each class.

How to Maintain Your Existing Trademark Registration

When you register your trademark, it is crucial to protect it to guarantee that you will receive legal protection continually. 

Trademark registration is never permanent; the USPTO demands periodic renewal and evidence of use to sustain a trademark’s enforcement.

Guidelines On How to Maintain Your Federal Registration.

File Maintenance Documents on Time

As you will soon learn, after registering your trademark, you will be required to provide specific maintenance documents to the USPTO at intervals. The most critical filings include:

• • Declaration of Use (Section 8): This has to be done between the 5th and 6th years from the date of registration to show that the trademark is still being used for the registered goods and services.
• • Renewal Application (Section 9): So filed after every period of ten years from the registration date the renewal application helps the trademark to remain current.

Show that You Have Continued to Use the Skill

The USPTO demands that the trademark owner has clear evidence that the trademark is being used in commerce. This means proving that the mark is still being used for the particular goods or services for which it was registered. 

Acceptable documents include product labels, website prints, or other marketing material containing the trademark in relation to the product or service.

Monitor Deadlines

If you fail to file your trademark within the agreed time, your trademark is likely to be canceled. 

It is recommended to set up notifications for the time when it is high time to renew the maintenance documents and other important documents that may influence your brand protection if you fail to consider them.

Contemplations When Extending the Protection of Trademarks

When seeking protection for a particular trademark for other products or services a number of factors apply as follows. 

It is very important to make sure that your brand is protected while at the same contact a knowledgeable trademark lawyer to avoid such problems as spending extra cash or weakening your brand.

Additional Trademark Applications and its Cost

Extending a trademark to other goods and services means filing new applications to the European Union (EU) which as a process incurs a cost. The fees are based on the number of classes in your application as classified by the application’s classes. 

For instance, if your new products fit into more than one trademark class say apparel, electronics, and trinkets, then you’ll have to pay for each class.

One needs to consider not only the cost of filing the initial application but also the ongoing expenses connected with the maintenance of several trademarks. 

Possible Threats to Trademark Dilution

The blurring of the trademark is likely to occur when the company decides to diversify in many markets or introduce a large number of products under the same trademark. 

In this case, dilution is the act of extending the brand’s domain in an array of unrelated commodities and services and, thus, diluting the brand’s equity in the market.

It is therefore important for a business to consider the following on whether to license their trademark to other products or services.

Why Trademark Searching Is Necessary

Trademark search is very important before filing for trademark protection for additional goods or services. This search assists you in knowing if there are any other trademarks that are similar to the one you want to apply for.

If you have any questions about adding goods or services to your trademark registration, please call 773-234-1139 to schedule a free consultation. At DrishtiLaw, our experienced attorneys can guide you through the trademark process and help ensure that your brand remains fully protected under state and federal laws.