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

[Jessica R. Friedman]

Honestly, that’s what I thought, because I have filed many requests to divide in my career, but sometimes, one misses something. So, thanks.

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<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Catherine Goe via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Monday, December 11, 2023 at 10:23 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Catherine Goe <goecat at gmail.com>
Subject: Re: [E-trademarks] SOU erroneously submitted claiming use on multiple products
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<mailto: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<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

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From: Jessica R. Friedman <jrfriedman at litproplaw.com<mailto: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<mailto: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<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

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