I want to add more trademark classes and designated goods/services! Can I add them later?

Can I add additional classes or designated goods/services?

I want to use my trademark for new and different products or services for business expansion, but the scope of the business is not covered by the already registered trademark. Should I add the designated goods/services?

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.

There may be cases where, due to business expansion or other reasons, you may later decide to use your trademark for goods or services that you did not envision when you originally filed your trademark application.
However, please note that once the application has been filed, it is not possible to add new classes or to change the scope of the designated goods or services.

After filing an application, it is not possible to add classes or designated goods/services.

It is not possible to add classes or designated goods/services to a trademark that has already been applied for or registered.
Any amendment to add new classes or to change the designated goods or services to a broader scope than that of the application after the application has been filed will be rejected.

• Japanese Trademark Law (Article 16-2)
  Where an amendment to the designated goods or designated services stated in the application or to the trademark for which registration is sought alters the gist thereof, the examiner shall reject the amendment by decision.

What is “change of gist”?

Whether or not an amendment is an “alteration of the gist” as provided in Article 16-2 of the Trademark Law above is considered as follows.

(Example 1) An amendment from “beer” in Class 32 to “western liquors in general” in Class 33
　⇒ The amendment is considered to be a change in the scope and constitutes a change of the gist.

(Example 2) An amendment from Class 12 “trucks” to Class 12 “automobiles” in Class 12
　⇒ This is considered an expansion of the scope and constitutes a change of the gist.

Deletion of designated goods/services or amendment to narrow the scope is possible.

On the other hand, narrowing the scope such as the deletion of classes or deletion of some designated goods/services is allowed.

(Example 3) Amendment of Class 21 “dinnerware, other than knives, forks and spoons” to “drinking cups, Japanese rice bowls [Chawan]”, and amendment of Class 41 “providing amusement facilities” to “karaoke services, providing other amusement facilities”.
　⇒ Since the amendment further limits or reduces the scope of the original goods/services, it does not constitute a change of gist.

　　　In addition, correcting a written error or changing an indistinct statement to a clear one does not constitute a change of gist.

What if I want to add a new class or designated goods/services?

It is quite possible that, due to business expansion or other reasons, a trademark will be used for goods/services that were not contemplated when the trademark application was filed, and the applicant may wish to increase the number of classes.
If you want to add a new class or designated goods /services, you must file a new application for the same trademark, selecting the class or designated goods/services you wish to add.

However, there are various precautions to be taken in such cases, so please be sure to check them.

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.