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Q: Is it possible to expand the class of a trademark? ( Answered 5 out of 5 stars,   0 Comments )
Question  
Subject: Is it possible to expand the class of a trademark?
Category: Business and Money > Consulting
Asked by: fablau-ga
List Price: $25.00
Posted: 27 Nov 2002 00:18 PST
Expires: 27 Dec 2002 00:18 PST
Question ID: 115321
Hello.

I'm working to register my brand name as trademark through this new
on-line system:

http://www.uspto.gov/teas/index.html


Now, in the procedure there is to specify a class of goods or service
related to the mark to register, and I'm wondering if it is possible
to expand (or add) new classes once (after) have filed and registered
the mark.

For example, if I register today my brand name "Electronic Musical
Services" in the international category IC 09 (Electrical and
Scientific Apparatus), can I, after one year or more, to expand this
brand to other categories like IC 41 (Education and Entertainment)  
and IC 38 (Communication)?

Seems to be a simple question, but either the FAQ of the USPTO website
and their assistance are unable to give me an answer since they
suggested me to get an advice from an attorney... but I won't, if
possible, to contact an attorney to know only this simple information.

Thank you in advance for any help.

Sincerely

Fabrizio Ferrari
Answer  
Subject: Re: Is it possible to expand the class of a trademark?
Answered By: easterangel-ga on 27 Nov 2002 01:08 PST
Rated:5 out of 5 stars
 
Hi! Thanks for the question.

Surprisingly the website of The United States Patent and Trademark
Office does indeed publish the answer to your query. It is not in the
FAQ or in the forms you have to complete but in the “Basic Facts About
Trademark” page.

The official word on this from the United States Patent and Trademark
Office is as follows:

“Can I change the goods and/or services after filing my application?”

“You can clarify or limit the goods and/or services. However, you may
not expand or broaden the identification of goods and/or services
after filing the application.”

“WHAT MUST THE APPLICATION INCLUDE?”
http://www.uspto.gov/web/offices/tac/doc/basic/appcontent.htm#goods 

The USPTO’s “Acceptable Identification of Goods and Services Manual”
is available in the following link:

“Trademark Acceptable Identification of Goods and Services Manual”
http://www.uspto.gov/web/offices/tac/doc/gsmanual/manual.html

So in a sense the answer to your question is “NO”. Once you have filed
the application, you cannot anymore expand or broaden on the
identification of your goods or services. The website is very clear on
this matter.

I still highly suggest that you still consult an attorney on this just
to make it really sure or maybe there is some remedy you could make to
the situation.

Search terms used: 
trademark registration

I hope these links would help you in your research. Before rating this
answer, please ask for a clarification if you have a question or if
you would need further information.

Thanks for visiting us.

Regards,
Easterangel-ga
fablau-ga rated this answer:5 out of 5 stars
Great answer, I had the information I looked for: Thank you!

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