Your Registration Covers What You Listed, Not What You Sell

You registered your trademark with a description of what you were selling at the time of the application. Then the business grew and started offering new services, product lines, etc.

The assumption almost all trademark owners make is that the initial registration still protects these new avenues. However, it usually does not.

What your registration actually covers

When you filed your application, you applied in one of the international classes and then included a description of the goods and services within that class. Your protection is limited to what was included in that initial application.

Let’s say you registered a clothing brand in Class 25, but later decide to also start a podcast under that same brand name, your registration would not extend that protection.

You cannot simply add to it

What surprises people most is that you cannot just go in and amend your registration to add goods, services, or a class. The identification in your registration sets the outer limit of every amendment you are permitted to make. It cannot be broadened, but can be limited.

So what do you actually do

You file a new application for the new classes. The old registration stays exactly as it is and will cover what it always covered. The new application covers the new services and goods.

What the delay costs you

The new application gets a new filing date. It does not inherit the priority of the original, which means the years between the two filings are years in which somebody else could have acquired rights in the new class.

If they did, they may have rights superior to yours for those goods, even though you have owned the name longer in your original class.

You are not unprotected in the meantime

Trademark rights in the United States flow from use, not from registration. If you have genuinely been selling the new products under the mark, you have common-law rights in them already.

What you do not have is a federal registration covering them which means no nationwide presumption of ownership, a harder enforcement position, and no registration to hand a marketplace or platform that asks for one.

Common-law rights are real. They are just considerably harder to use.

When to look at this

Any time the business changes, add a review of your trademark protection as part of the internal procedure. Part of the analysis should be whether you would be upset to find a competitor using your name for it and what the ramifications of a rebrand would look like.

Where to start

Not sure if your current trademark protects you? Just send us the registration number. We will read the identification against what you are actually selling and tell you whether there is a gap, and if so what filing closes it. If the answer is that your existing registration already covers it, that is a short conversation and a useful one.

Our flat-fee trademark registration covers one mark in one class, including the clearance search for that class. If you are not sure whether your current application was set up correctly in the first place, our application review checks the class and identification among other things.

This article is general information, not legal advice, and reading it does not create an attorney-client relationship. Rules differ by state and change over time. Please speak with a licensed attorney about your own situation.