[E-trademarks] Use in commerce

[Kevin Grierson]

It really depends a lot on whether the second product fits within the description in the registration.  For example, if your client is lucky enough to have a registration old enough that it’s for “software” as opposed to “downloadable software,” then the fact that the product is now a SaaS offering would not make a difference.

Kevin Grierson​​​​
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Judith S via E-trademarks
Sent: Tuesday, May 21, 2024 2:27 PM
To: Carl Oppedahl <e-trademarks at oppedahl-lists.com>
Cc: Judith S <judith.a.s at gmail.com>
Subject: [E-trademarks] Use in commerce

EXTERNAL EMAIL
Hi All,

I have a small client that approached me about renewing their registered mark. However, since they obtained the mark their business has changed.

1. They still make available replacement parts with the branding for the original product.

2. They have an alternative product that they use the brand with, which is still within the goods description, but different from their original use.  The alternative product is a sub-component of a different system which has separate branding.

Would we be able to rely on just the first use (replacement parts)?  The product is still described on their site, but not available for new purchasers. Just servicing existing customers.

Would there be any issue if we used the second use, for a product which is different but falls within the same goods/services description?

I'd appreciate any insight.

Thank you!

Judith
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