[E-trademarks] SOU erroneously submitted claiming use on multiple products

[Catherine Goe]

Jessica, Hello!  IMHO you have to file a new application for B&C.
Some filing mistakes can be corrected.  Some can't.  Timing of action /
non-action is key.
The statutory time for filing any request to divide has passed.
See TMEP 1110.03 Time for Filing Request to Divide citing 37 C.F.R. 2.87(c).
When it comes to allowing correction of mistakes, the USPTO can't
contravene the statutes.
Re SOUs generally, one has to get it right on the first go-around (incl. of
course *timely *proper use of options like extensions, division, ins.
extension).
Given statutes also provide that withdrawal of an SOU is prohibited and
statutory requirements must be met within statutory filing periods,
I regard each SOU as a potential box canyon.  Fail to set & follow a viable
trail and you're left with no way forward.
If anyone has better advice for Jessica, I'll be happy to hear it!
Cat Goe, TM Admin/Paralegal

P.S.  I see Kevin just responded.  *Succinctly. * Happens I just learned a
new text acronym:  TL;DR [too long; didn't read].  Laughing at myself.


On Mon, Dec 11, 2023 at 8:58 AM Jessica R. Friedman via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> No takers?
>
>
>
> Jessica R. Friedman
>
> Attorney at Law
>
> 300 East 59 Street, Ste. 2406
>
> New York, NY 10022
>
> Phone: 212-220-0900
>
> Cell: 917-647-1884
>
> E-mail: *jrfriedman at litproplaw.com <jrfriedman at litproplaw.com>*
>
> URL: *www.literarypropertylaw.com <http://www.literarypropertylaw.com>*
>
>
>
> [image: 1479430908386_PastedImage]
>
>
>
>
>
> *From: *Jessica R. Friedman <jrfriedman at litproplaw.com>
> *Date: *Friday, December 8, 2023 at 3:28 PM
> *To: *For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Subject: *SOU erroneously submitted claiming use on multiple products
>
> Client filed application to use the mark on products A, B and C. Client
> used the mark on only A but filed a Statement of Use claiming use on all
> listed products, and now has a registration that covers A, B and C.
>
>
>
> I can file a Section 7 amendment to remove B & C from the registration,
> but am I correct that Client is going to have to file a new application to
> cover B & C?
>
>
>
> In other words, am I correct that there’s no way to say, oops, my client
> filed this as to B&C by mistake - can B&C become the subject of a
> divided-out application based on the original application so that the
> client doesn’t actually have to start from scratch and pay all the filing
> fees?
>
>
>
> Jessica R. Friedman
>
> Attorney at Law
>
> 300 East 59 Street, Ste. 2406
>
> New York, NY 10022
>
> Phone: 212-220-0900
>
> Cell: 917-647-1884
>
> E-mail: *jrfriedman at litproplaw.com <jrfriedman at litproplaw.com>*
>
> URL: *www.literarypropertylaw.com <http://www.literarypropertylaw.com>*
>
>
>
> [image: 1479430908386_PastedImage]
>
>
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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