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) A third party may have already applied for or registered a similar or identical trademark in that class.

If a third party has already applied for or registered a similar or identical trademark in the class in which you wish to register an addition, it will be difficult to register the trademark in that class. Before filing a new application, we recommend that you conduct a search in the new classes and designated goods/services.

(2) More work to maintain

You have to manage multiple registered trademarks that differ in both the scope and duration of rights.
In addition, renewal registration fees must be paid for each of them.
If you have two registered trademarks for the same trademark in different classes, you will of course have to pay renewal registration fees for both.
If you own two registered trademarks for the same trademark in the same class (e.g., you have registered an additional trademark in the same class for additional goods to expand the scope of the trademark), you will have to pay a renewal registration fee for each trademark, even though they are in the same class.

In the above example, at the time of renewal, you could dare not renew, but instead file a new application as one trademark combining the goods/services of the existing registered trademark and the goods/services you wish to add, which, if registered, will be combined into one registered trademark.

Please consult with us for more details, as it is necessary to consider the timing and whether the existing registration should be withdrawn.

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.