Friday, May 14, 2010

Is new TM application needed for new goods?

Dear Rich: I obtained a trademark on my company logo. Does this mean that every product that bears my company logo I now have to register with the trademark office to put it in commerce? Thanks for keeping your question short. Brevity is much appreciated even if it means a lack of clarity. We think what you're asking is whether you need to file a new trademark application for every product that is not listed in your trademark registration. The short answer is, "that depends." Obviously you don't need to do it if you're not concerned about someone using a similar mark on those types of goods. Otherwise, the Dear Rich Staff wonders if you need to spend the money, especially if the products are the kind that might be anticipated by your registration. For example, if your registration is for silverware, it's likely you might expand into another products, for example kitchen knives, knife block sets, or possibly, even dinner plates or bowls. Your mark secures you protection -- at least to the extent that the USPTO will be unlikely to grant a registration to another company -- for a gray area of products that are related to your goods, generally considered similar to consumers, and to which your business might potentially expand. 
How do you tell? A lot of factors are used to determine which related goods should be protected by your mark including its distinctiveness, your marketing channels, consumer sophistication, and the international classes in which the goods fall. Sometimes, the USPTO's decision on these issues doesn't always make sense. For example, one would think that automobiles and automobile tires are always considered to be closely-related goods. Not so. Probably a prudent course would be to file a new trademark registration if you expand into a completely new international class of goods or services, or if one of your products becomes an especially strong seller for your company.