[E-trademarks] Use in commerce

[Sam Castree]

I just need to say how much I *really *hate the current division between
"recorded software" and "downloadable software."  It seems so pointless.
Those are not separate goods.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*



On Tue, May 21, 2024 at 2:22 PM Kevin Grierson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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**​**​**​**​*
>
> [image: Mobile:]
>
>   757-726-7799
>
> [image: Fax:]
>
>   866-521-5663
>
> [image: Email:]
>
>   kgrierson at cm.law
>
>
>
> *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
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
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>
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