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

[Michael Brown]

In addition to the previous advice, even if B&C could be separated from the
original registration, wouldn't that filing be in question because of the
false SOU for those goods?

I would file a new application that is not subject to that potential
weakness.

Michael Brown
Michael J Brown Law Office
354 Eisenhower Parkway
Plaza I, 2nd Floor, Suite 2025
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michaeljbrownlaw at gmail.com
www.mjbrownlaw.com
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On Mon, Dec 11, 2023 at 10:21 AM Catherine Goe via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
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>> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>>
> --
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>
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