Business owners may file trademark applications and later wish to add additional classes as their businesses expand to more goods and services. Unfortunately, people cannot directly amend trademark applications to add additional classes, but they may be able to establish new filings with the United States Patent and Trademark Office (USPTO). Therefore, adding new classes to a trademark is made possible by creating new applications.
According to the United States Patent and Trademark Office (USPTO), international agreements have established broad domains called classes. There are 45 separate trademark classes for goods and services, including 34 classes for goods and 11 classes for services. Classes are a critical component of the trademark application and registration process. The class of a product or service is crucial for assessing fees, processing trademark applications, and finding registered or pending trademarks in the USPTO database. Trademark classes are also important because they indicate the domains in which a trademark receives legal protection. Correctly identifying the class or classes that apply to a good or service is essential, as classes only shield the goods or services in their domains.
Before filing a trademark application, according to the USPTO, trademark owners can use the online Trademark ID Manual to find the classes that apply to particular goods and services.
Business professionals who wish to add classes to existing trademarked goods and services may wonder if they can amend an established trademark application. Business owners may amend applications to clarify or reduce—but not expand—the classifications of goods and services. Amending a completed trademark application to add classes is, therefore, impossible.
The provision concerning amendments in the Trademark Manual of Examining Procedure provides more information about the rule that prohibits adding additional classes to your trademark through an application amendment. Although the law does not permit altering a preexisting trademark application to add more classes, it does allow the trademark owner to file a new trademark application to expand trademark protection to more classes of goods and services.
As businesses grow and expand, owners may find that those initial trademark registrations, which outline the specific areas where the brand receives legal protection, no longer cover the full range of the brand's goods and services. If a brand adds a new product that the original trademark registration does not safeguard, the company may want to register a trademark for the new good to protect it. Making a new trademark application is necessary to add additional classes to a trademark. An intellectual property attorney, such as an experienced IP lawyer at Amini & Conant, can help with trademark applications for new goods or services.
Companies should begin the trademark registration process at the correct time so that the USPTO does not reject the application. If a good or service is already on the market and not covered by a current registered trademark, the business owner may apply for a trademark for the new product immediately. Also, if a business plans to launch a novel good or service within the next three years, it can begin the process of registering a trademark to shield it.
Brands cannot apply to register their trademarks for classes if they do not have concrete plans to put goods or services in those classes on the marketplace. They also cannot register trademarks for unused classes to prevent competition. Only when a company already has—or has plans to provide—products or services in a class may it register trademarks for that class.
When registering trademarks for more classes, trademark owners may decide whether to use a multi-class trademark application or a single application for each class. As there are several benefits and drawbacks associated with each option, consulting with an experienced legal professional may help a business owner decide which type of application to file.
What Are The Benefits of Multi-Class Trademark Applications?
Multi-class trademark applications may offer several benefits for the trademark owner that include:
- Permitting easy transfers of goods and services between classes
- Reducing the initial cost of the application—although businesses must pay the full fees later, the lower initial fee allows them to keep money in reserve for a longer period of time
- Simplifying the application by including all classes in one application
What Are The Drawbacks of Multi-Class Trademark Applications?
Trademark owners must consider the drawbacks of multi-class trademark applications, which include the following:
- If the USPTO takes issue with one of the classes, the entire application could be at risk of denial
- When people apply with a plan to launch some products or services before releasing others, the multi-class application process can be inefficient. When some goods or services already exist and others are still in development, applicants must ask the USPTO to divide the application, extending the time frame for the items or services that have not yet launched. In this case, it may be more effective to file separate applications for each class
- When it comes time to renew the trademark registration, renewal may be difficult if the company no longer offers one of the goods or services that the trademark covers
- Using a multi-class trademark application, as opposed to several single-class trademark applications, may carry more risks
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.