Trademarks are an important part of business. A business is a living thing, growing and changing shape as its owner and others in the business come up with ideas for new goods and services the business’s customers might need. Trademarks protect these products, unless the products are part of a trademark class that the registration does not cover. Can you simply add additional classes to your existing trademark? If not, what must you do to protect the incredible new good or service you came up with? If you need assistance filing a trademark application, expanding the scope of your trademark protections, or have other questions regarding trademarks, an experienced Chicago trademark attorney with Sullivan & Carter, LLP may be of assistance. Call (929) 724-7529 and we will schedule an appointment to discuss your trademark concerns.
Trademark registration is important for a number of reasons. Technically, a trademark belongs to a business or its owner upon creation; however, an unregistered trademark is unprotected and vulnerable. When a business registers a trademark, it gains specific protections that benefit the business.
Unregistered trademarks have few legal protections, such as being valid only in the geographical area in which they are used, limited remedies for infringement, and a requirement to prove the mark is valid. There is no presumption of ownership with an unregistered trademark.
Once a trademark is registered with the United States Patent and Trademark Office, it has significantly more legal protections. These additional protections make it easier and less expensive to enforce the trademark owner’s rights.
When a business or individual registers a trademark, they specify the goods and services they intend to use or are using the trademark for in the application. Once registered, they are granted the exclusive right to use that trademark in connection with those goods and services. This extends them additional benefits, such as being able to file a lawsuit for infringement, which includes counterfeit products, and helping to establish their brand identity.
When people walk into a store to buy a product, or shop online for one, they often have a particular brand in mind. These brands come to mind because of trademarks. Consumers buy the brands they buy because they trust them and part of that trust is the result of trademarks. Trademarks tell consumers that they can be confident that this product is made by a particular brand and that it is the same quality as other products made by that brand. Trademarks make purchasing decisions easy for consumers by allowing them to quickly identify the brand they like.
Unregistered trademarks are used, but because they are only valid in the geographical area in which they are used, infringement can happen relatively easily. By registering a trademark, the owner makes their ownership public. The trademark is added to a searchable database that makes it easy to find that a trademark is already registered to someone else. This makes it less likely that someone will infringe on the mark, and if they do, also allows the trademark owner to take legal action.
While someone can take legal action if their trademark is unregistered, it is much more difficult and has more limited remedies than a registered trademark. By registering the trademark, the owner creates a presumption of ownership, eliminating the need to show a lot of evidence proving ownership. The owner also expands the remedies available to them, such as being able to ask for attorney’s fees and damages instead of just an injunction.
Registering a trademark increases its value because of the protections registration affords. A trademark owner may have no intention of selling their trademark and think that its value is irrelevant. However, aside from being bought and sold, trademarks can also be used as collateral for loans and be licensed to others for use, both of which can be lucrative opportunities for trademark owners. However, if the trademark is not registered, it cannot be used in this way and therefore, is not as valuable.
Cybersquatting occurs when someone purchases a domain name to try to resell it at a profit. The domain names purchased are ones that consumers would associate with a well-known company or brand name, in the hopes that the company or brand would be willing to pay much more for the domain name.
The Anti-Cybersquatting Consumer Protection Act (ACPA) protects both private citizens and trademark owners from cybersquatting attacks. The ACPA makes it illegal to buy or register a trademarked name that another individual or business already owns. If a trademark is unregistered, it does not have this protection.
The USPTO uses trademark classes to assess fees, organize the goods and services used in trademark applications, and simplify the search for pending and existing trademarks. There are 45 classes. There are 34 classes for goods and 11 for services. Some goods or services may fit more than one class, or a business may make several different products that are each in a different class.
When the individual or business applies to register their trademark, they must indicate the classes they wish to register the trademark in based on the goods or services they intend to use or are using the trademark for. There is a fee associated with each class, so many trademark applicants try to limit their application to only those classes that apply at the time of application or classes they are certain they will be using in the near future. While this saves money at the time, it can also present a problem in the future if they decide to expand their offerings under that trademark.
Once an application is filed, the applicant cannot add additional classes to it. They may amend their application for clarity. This means they may make an amendment that clarifies the information provided, or that makes their information more specific, but they cannot make it more general by adding more classes. In other words, they can amend the application to give a more detailed description of a good or service, but they cannot add more classes because they forgot them or based on the idea that they might use them.
Trademark owners also cannot add goods or services to an existing trademark, which means they cannot add new classes to the trademark. This is because trademark registrations are approved based on the information included in the application. Even the smallest of changes in goods or services could make a major impact by infringing on another trademark owner’s existing rights. Therefore, if a trademark owner wishes to add classes to an existing trademark, they will need to file a new application.
Whether an individual or business is filing a trademark application for the first time or filing a new application for new classes when they have an existing trademark, they often wonder whether to file a multi-class or single-class application. If they are only applying for one class, the answer is obvious. But if they are applying for multiple classes, which application is the better option? An experienced Chicago trademark attorney with Sullivan & Carter, LLP may be able to help you determine which application is most suited to adding additional classes to your existing trademark.
A multi-class application is a single application containing several classes. This application has the advantages of fewer deadlines to docket, having only one foreign filing date, and a single response due date to any Office Actions that are issued. There may also be more flexibility in moving goods or services between classes.
However, these applications are just as expensive as single-class applications, and could potentially cost more in attorney’s fees. If one class is rejected, the entire application is put on hold, leaving any approved classes in limbo until the applicant either files a Request to Divide or deletes the rejected classes. The more classes one application has, the higher the chances of at least one class being rejected. This likelihood of rejection exists with the single-class application as well, but would not hold up any other single-class applications that were approved.
A single-class application is one that contains only one class. Trademark applications can file multiple single-class applications for the same trademark. This allows the trademark examining attorney to evaluate each application on its own, rejecting and approving each one without impacting the others, resulting in faster approvals of classes to which there are no objections. Single-class applications can also make filing Statements of Use more manageable for the applicant. If one class is renewed falsely or inaccurately, the other classes remain protected while the one class is sorted out.
If the trademark owner is concerned about being able to shift goods and services between classes and considering a multi-class application as a result, they can move goods and services between classes even with single-class applications. The only requirement is that the application from which the good or service is being deleted was filed on or before the date that the application the good or service is being added to was filed. If the applicant submits all single-class applications on the same date, they will have the ability to move goods and services between classes.
Because adding classes to an existing trademark can only be done by filing a new application and paying more filing fees, some trademark applicants will consider applying for additional classes in their initial application that they are not currently using but think they might in the future. This is allowed, as long as the applicant is doing so with a good faith intention to use the mark for those goods or services. A registration for classes not currently in use will not be final until the trademark owner can demonstrate actual use of the mark in those classes.
However, it is also important to understand the potential risks of this “just in case” approach. The application will be more vulnerable to being challenged if there are one or more classes that are not currently in use, so it is important that trademark owners have a reasonable business plan or strategy in place for expansion into those classes. This means that if the individual or business is thinking of applying for registration in classes that they do not have a product for, or do not even have an idea for a product, applying for those classes may do more harm than good.
As your business grows and changes, your products often change as well. Your trademark has helped you establish trust with consumers and you want to ensure that those consumers can find your new products under that same trademark. Ensuring that your existing trademark protects additional classes of goods and services can be done, but you will need to file a new application. An experienced Chicago trademark attorney may be able to assist you with filling out your application, choosing the appropriate classes to cover your new products or product ideas, monitoring the application, and responding to Office Actions. Call Sullivan & Carter, LLP at (929) 724-7529 to schedule a consultation and review your trademark needs.
Add your email below to receive the latest news, tips, and information from Sullivan & Carter, LLP.
Add your email below to receive the latest news, tips, and information from Sullivan & Carter, LLP.
