IP Tech Knowledgy

Consider refreshing trademark registrations as your business grows and evolves.  As you move into new areas providing new types of goods and services, it may be prudent to file new trademark applications at the U.S. Patent and Trademark Office that cover the new goods and services you are offering.

Trademarks registrations must provide an identification of the particular goods and services for which the mark is registered.  An original application could be worded broadly enough so that the words in the identification could cover new related offerings (an ID of “shirts” covers T-shirts and tuxedo shirts). However, if a business expands into areas it did not first envision, the ID of goods and services in its original trademark registration likely does not cover the new items it is offering.  A business cannot add to its list of goods and services in a registration; it must file a new application to cover the new items.

Note that if the goods or services relate to a technology and the evolution completely converts the offerings to a new type of technology (such as paper to online, or tangible digital media to cloud-based) an existing registration could be converted to the new technology under a special exemption for complete evolution - see this article. 

Any renewal deadline for a trademark registration is always a good time to think about whether the mark should also be bolstered with new applications filed for additional services.  A business should also periodically review whether its marks are fully protected for its current offerings.  Also consider filing an Intent-to-Use application if plans for new goods or services are brewing and would not be fully covered under the wording of the existing registration. 

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com