Can You Expand Your Trademark Protection to Other Goods and Services?

It’s a question I’ve heard a lot. If I don’t include that good or service on the application now, will I be able to add it later? For example, if you have a trademark for THREAD EASY for a bookstore, can you file a new trademark application for THREAD EASY for a knitting store?

The answer is yes, you can file a new trademark application for your trademark that covers different goods and services, as long as there is no likelihood of confusion with other existing trademarks. However, you cannot add new goods or services to an already filed or registered trademark.

Two people sitting at a small table in front of their laptops. There is a cup of coffee, a succulent resting on two coasters, and a small notebook also on the table.

It’s a question I’ve heard a lot. If I don’t include that good or service on the application now, will I be able to add it later? For example, if you have a trademark for THREAD EASY for a bookstore, can you file a new trademark application for THREAD EASY for a knitting store?

The answer is yes, you can file a new trademark application for your trademark that covers different goods and services, as long as there is no likelihood of confusion with other existing trademarks. However, you cannot add new goods or services to an already filed or registered trademark.

Why You Cannot Add New Goods or Services to an Existing Trademark

You cannot add new goods or services to an existing trademark application or registration that would expand the scope of protection. You can only amend your identification of goods or services to clarify or narrow it. This is because the United States Patent and Trademark Office (USPTO) (1) examines your trademark based on the goods or services that you specify in your application and (2) basis all of that information off of your trademark application filing date. If you add new goods or services later, it would change the basis of your trademark and affect its registrability as well as lead to uncertainty for new trademark filers.

Let’s say you have a trademark for THREAD EASY for a bookstore; you cannot add knitting supplies to your existing trademark application or registration. This would expand the scope of your trademark and potentially create confusion with other trademarks in the same or related classes. You would have to file a new trademark application for THREAD EASY for knitting supplies.

Why You Can File a New Trademark Application for Your Trademark That Covers Different Goods and Services

You can file a new trademark application for your trademark that covers different goods or services, as long as there is no likelihood of confusion with other existing trademarks. This is because each trademark application is evaluated separately by the USPTO based on the specific goods or services that you identify in your application. As long as your trademark is distinctive and not confusingly similar to other trademarks in the same or related classes, you can register it for different goods or services.

Going back to THREAD EASY for a moment, if you have a trademark for THREAD EASY for a bookstore, you can file a new trademark application for THREAD EASY for knitting supplies, as long as there is no other registered trademark for THREAD EASY or a similar mark for knitting supplies or related goods or services. You would have to provide evidence of your use or intent to use your trademark for knitting supplies and pay the appropriate fees.

Benefits of Filing a New Trademark Application for Your Trademark That Covers Different Goods and Services

Filing a new trademark application for your trademark that covers different goods or services can have several benefits for your business. For instance:

  • It can help you protect your brand identity and reputation across different markets and industries.

  • It can help you prevent others from using your trademark or a similar mark for related goods or services without your permission.

  • It can help you expand your customer base and increase your sales and profits.

  • It can help you enhance your brand recognition and loyalty among your customers.

How to File a New Trademark Application for Your Trademark That Covers Different Goods and Services

If you want to file a new trademark application for your trademark that covers different goods or services, here are some steps that you should follow:

  • Conduct a comprehensive trademark search to make sure that your trademark is available and not confusingly similar to other existing trademarks in the same or related classes.

  • Choose the appropriate classes of goods or services that match your current or intended use of your trademark.

  • Prepare and file your trademark application online using the USPTO’s Trademark Electronic Application System (TEAS).

  • Respond to any office actions or oppositions from the USPTO or third parties within the given deadlines.

  • Monitor the status of your trademark application and registration using the USPTO’s Trademark Status and Document Retrieval (TSDR) system.

In summary, you can file a new trademark application for your trademark that covers different goods and services, as long as there is no likelihood of confusion with other existing trademarks. However, you cannot add new goods or services to an already filed or registered trademark. Filing a new trademark application for your trademark that covers different goods and services can have several benefits for your business, but it also requires careful research and planning. Therefore, you should consult a trademark attorney before taking any action. Contact us today if you have questions or if you want to file a trademark.