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 already be identical or similar trademarks filed or registered by third parties for the same class.

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.

Once the application has been filed, additional goods or services cannot be added, right?
After all, I’d like to carefully consider things before filing and, if possible, manage everything under a single trademark. Let’s ask a patent attorney for advice!

Summary

If you file a trademark application limited only to specific products of your company at the time of filing, you may later need to obtain additional trademark registrations when expanding your product line.

Many of the inconveniences of having to file and register additional trademarks can be avoided if the scope is carefully considered in advance before application.

At Amazing DX, we also provide an easy-to-understand list showing which classes correspond to each type of business, so please feel free to refer to it.

If you are considering which classes or designated goods and services would best cover your company’s needs, please do not hesitate to contact us. Our trademark attorneys with specialized expertise will provide reliable support.