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Bill Attorney
Bill Attorney, Lawyer
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I am interested setting up a federal trademark for the name

Customer Question

Hello,
I am interested setting up a federal trademark for the name of my brand (but not the logo at this time). I have done a thorough search on the USTPO site, google and website domain names. All indicate the name is ***** ***** use and available. My situation is: I plan to have an online retail store where I will sell map posters to start, but plan to expand to other product offerings under the brand name that center around novelty and recreational items. Would I use the international class for online retail store (believe its 035) and for the map poster (believe its 016)? How would I trademark other products that I would add in the future to the online store that aren't related to map posters? Would this be an amendment to the existing trademark?
Thanks
Chris
Submitted: 1 month ago.
Category: Intellectual Property Law
Expert:  Bill Attorney replied 1 month ago.

Dear Customer,

Thank You for posting your question to just answer today. This is attorney Bill offering legal information specific to your concerns.

It is possible to modify both the trademark design to a limited extent that I will outline and the registration of classes at a future time after first registration with the USPTO .

Because you have yet to use your mark in commerce your application needs to include a declaration of a bona fide intent to use the mark after registration which must in fact follow after your registration.

"intent-to-use" under §1(b) of the Trademark Act, 15 U.S.C. §1051(b)

The amendment the mark is governed by the following code:

"

Section 1(a) Application. The mark in an application under §1(a) of the Trademark Act can be amended if the specimen supports the amendment and the amendment does not materially alter the mark. 37 C.F.R. §2.72(a). See TMEP §§904 et seq. regarding specimens, and TMEP §§807.14 et seq. regarding material alteration.

Section 1(b) Application. The mark in an application under §1(b) of the Trademark Act can be amended if the specimen filed with an amendment to allege use or statement of use supports the amendment, and the amendment does not materially alter the mark. 37 C.F.R. §2.72(b). See TMEP §§904 et seq. regarding specimens, TMEP §§1104 et seq. regarding amendments to allege use, TMEP §§1109 et seq. regarding statements of use, and TMEP §§807.14 et seq. regarding material alteration.

Section 44 Application. The mark in an application under §44 of the Trademark Act can be amended if the mark in the foreign registration certificate supports the amendment, and the amendment does not materially alter the mark. 37 C.F.R. §2.72(c). See TMEP §1011.01 regarding the requirement that the mark on the drawing in a §44 application be a substantially exact representation of the mark as it appears in the foreign registration certificate, and TMEP §§807.14 et seq. regarding material alteration."

So as long the amendment doesn't materially effect the mark it can be amended.

In relation to the amendment of a mark in international registration outside the US the Madrid protocol doesn't allow an amendment but requires a new registration.

In relation to the addition of classes this can be done at any stage by submitting a class specimen and paying the fee for the additional class.

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Thanks

Attorney Bill

Expert:  Bill Attorney replied 1 month ago.

Dear Customer,

I would like to follow up with you on your question in which I replied to a few days ago and gave an answer. Do you need any more information ?

When Finished PLEASE REMEMBER THAT WE EXPERTS COUNT ON POSITIVE RATINGS

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Thanks

Attorney Bill