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

Tue May 28 13:46:41 EDT 2024

Understood.  The problems with the goods/services distinction (or lack thereof) tend to surface later, mostly when Section 8s or renewals are due and the client has switched from downloadable software hosted by the customer to a SaaS offering.  The Tech Transition program can help in some cases but it’s a royal PITA and takes forever.

Kevin Grierson
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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 28, 2024 12:14 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: Re: [E-trademarks] [EXT] Re: Use in commerce

EXTERNAL EMAIL
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<mailto: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
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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 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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Alex Butterman <abutterman at dbllawyers.com<mailto: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
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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 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<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Sam Castree <sam at castreelaw.com<mailto: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<mailto: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
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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

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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