[E-trademarks] Sanity Check - DOFU (SaaS vs. Downloadable Software)

[Montgomery, Alexander P.]

Client has a registration on the Supplemental Register for downloadable software in Class 9. DOFU goes back decades.

Client transitioned to cloud-based software in Class 42 less than five years ago (same mark).

In a new application for the Class 42 software, can it claim first use going back to the DOFU for the downloadable software in Class 9? Or is the DOFU when it first provided the Class 42 software? My initial thought was the latter, as the cloud-based software is a different type of product.

I'm trying to figure out if a new application for registration on the Principal Register with a 2(f) claim based on five years' use is viable, or if we should simply petition to amend the goods in the previous registration to cloud-based software based on technology evolution.

Alexander P. Montgomery <http://www.hinckleyallen.com/people/alexander-p-montgomery>
Partner
________________________________
Hinckley Allen <http://www.hinckleyallen.com/>
28 State Street
Boston, MA 02109-1775
p: 617-378-4366 |  f: 617-345-9020
amontgomery at hinckleyallen.com<mailto:amontgomery at hinckleyallen.com>

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