[E-trademarks] Use in commerce

[Judith S]

It's actually a physical product.

The original was a stand-alone product sold to end consumers. The new
product is sold to businesses as part of a larger product package.

But I think it fits within the goods/services description.

I agree that the software distinction being made now is stupid, though.

Judith

On Tue, May 21, 2024 at 12:20 PM Kevin Grierson <kgrierson at cm.law> 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**​**​**​**​*
>
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>
>   757-726-7799
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>   kgrierson at cm.law
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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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