[E-trademarks] Use in commerce

[Kevin Grierson]

I think all the PTO cares about is whether the mark is used on a product that fits the description in the registration.  Whether the product itself is the same one as the registrant originally offered is irrelevant.  If Coca Cola stopped selling the COKE we are all familiar with and instead rebranded FANTA as COKE, they’d still be able to renew their COKE registration because COKE was still being used as mark for soft drinks.

Kevin Grierson​​​​
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From: Judith S <judith.a.s at gmail.com>
Sent: Tuesday, May 21, 2024 3:53 PM
To: Kevin Grierson <kgrierson at cm.law>
Cc: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] Use in commerce

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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<mailto: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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[Mobile:]
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto: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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Judith S <judith.a.s at gmail.com<mailto:judith.a.s at gmail.com>>
Subject: [E-trademarks] Use in commerce

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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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