Expanding Trademark Coverage: Can Classes or designated goods/services be added later?

Can Classes or designated goods/services be added?

With the expansion of my business, I would like to use my trademark for new products and services that are not covered under my current trademark registration. It would be better to add such designated goods/services to the registration, right?

You are right about using the trademark for the designated goods/services! However, it is not possible to add new classes or designated goods/services to an already registered trademark.

Additional classes or designated goods/services cannot be added after filing.

It is not possible to add classes or designated goods/services to a trademark that has already been applied for registration or registered.

Deletion of designated goods/services or corrections to narrow the scope are possible

On the other hand, changes that narrow the scope of protection, such as deleting a class or removing some designated goods/services, are permitted.

For example, correcting “tableware” under Class 21 to “cups and bowls” (scope narrowing) is allowed.

Additionally, corrections of typographical errors or amendments to make unclear descriptions more precise are also permitted.

What to do when you want to add classes or designated goods /services?

If you want to add classes or designated goods/services, you will need to file a new application using the same trademark, selecting the additional classes or designated goods/services you wish to include.

Points to note when filing a new application for addition

1. There may be cases where a third party has already filed or registered a similar or identical trademark for the same class, designated goods/services.

If a third party has already applied for or registered a similar or identical trademark in the class where you intend to register an addition, obtaining registration for the trademark in that class may be challenging. Therefore, it is advisable to conduct a thorough search for the new class or designated goods/services prior to filing the application.

2. Increased Administrative Burden

Managing multiple trademark rights with varying scopes of protection and durations will be required. Furthermore, renewal registration fees will need to be paid separately for each trademark.

I cannot add goods/services after filing the application, can I? It is possible that the business may expand in ways that were not envisioned when the application was filed, but looking at the precautions for filing additional applications, I would still want to consider this carefully before filing so that I can manage as much as possible under one trademark. Maybe I should talk to a patent attorney!

Summary

If you file a trademark application only for your specific product at the time of application, you will need to register an additional trademark when you later expand your product line.
The hassles of filing and registering additional trademark applications can often be avoided if you carefully consider the application before filing.
Amazing DX has a page that provides an easy-to-understand list of the classes in which your industry falls.

Please feel free to contact us if you would like to consider what classes and designated goods/services would cover your company’s needs. Our patent attorneys specializing in trademarks will be happy to assist you.