[E-trademarks] [EXT] Re: Use in commerce

Tue May 28 12:13:39 EDT 2024

Dear Kevin,

While I certainly agree with what you've said, I can kind of live with the
split between software goods and software as a service, if for no other
reason than my mind has been working with the goods/services distinction
for so long, and the whole system of international classes and all.  But
recorded and downloadable software are in *the same class*.  It's a
headache for my video game developer clients who might have a physical
release planned but not as quickly as the digital download.

Cheers,

Sam Castree, III

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

On Tue, May 28, 2024 at 10:18 AM Kevin Grierson via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> And of course, the division between recorded/downloadable software and
> software as a service, which is in a completely separate class even though
> the distinction between downloadable and non-downloadable SaaS offerings
> gets blurrier every day.
>
>
>
> *Kevin Grierson*********
>
> [image: Mobile:]
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>   757-726-7799
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> [image: Fax:]
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> [image: Email:]
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>   kgrierson at cm.law
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Alex Butterman via E-trademarks
> *Sent:* Saturday, May 25, 2024 2:28 AM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Alex Butterman <abutterman at dbllawyers.com>
> *Subject:* Re: [E-trademarks] [EXT] Re: Use in commerce
>
>
>
> EXTERNAL EMAIL
>
> And I have to say how I could not agree more with that statement and
> sentiment. The division is growing more and more obsolete by the day. What
> software these days is purely downloadable? Does this have to get changed
> at a Nice Classification meeting that occurs every year or few years at
> WIPO, i.e. the same way that “downloadable software” was originally
> separated out from nondownloadable software about 25 years ago?
>
>
>
> a separate
>
> *Alex Butterman*
>
> Partner
>
> *DUNLAP **BENNETT **& LUDWIG*
>
> *211 Church St., SE; Leesburg, VA 20175*
>
> T: 703-777-7319 – *BIO*
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>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Sam Castree via E-trademarks
> *Sent:* Tuesday, May 21, 2024 3:51 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Sam Castree <sam at castreelaw.com>
> *Subject:* [EXT] Re: [E-trademarks] Use in commerce
>
>
>
> 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
>
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