IP Tech Knowledgy

Hero Image for page

Don’t Just Renew Trademarks, File to Register Newer Lines of Goods and Services

Trademark registrations may get stale as a business evolves into offering new lines of goods and services.  To keep protection strong, a business should be sure to file new applications to reflect its current array of goods and services offered.  A good time to evaluate the need to do this is when the business must file to keep the registration active before the sixth anniversary of the registration date and renew the registration every ten years.  Get in the habit of reviewing the business’s current offerings and determine whether to file new applications to protect new goods and services offered since the original filing date.  Trademark registration applicants must list the goods and services offered in connection with the mark, and the U.S. Patent and Trademark Office requires specificity as to how the offerings are identified.  Because it is often more than six years between the time a business files a trademark application and the first update filing, a business may have evolved so that the listing in the registration at the PTO does not match with what the business currently offers.  This is especially true of businesses where the technology evolves and the business must continually revise its product line or focus of its services.  For example, a registration for CD players would have to be abandoned if the company has moved exclusively to selling Bluetooth streaming devices.  The PTO does not allow additions to a registration, so the only alternative is to file a new application for the mark with a fresh list of goods and services offered.  While a business should always think about whether its registrations are current, the renewal deadlines are a good time to consider freshening up the trademark portfolio.

Print

Date

08.30.18

Type

Publications

Authors

Himmelrich, Ned T.

Related Legal Boutiques

Technology & Intellectual Property