Patent Attorney and Founder
If I submit an application for a standard mark which is now pending, great. Can I submit an addendum for additional goods and services? For example, my standard mark application shows a can of beans, but I also want the goods and services of a bicycle tire. Can I submit an addendum, or am I able to withdraw the app and resubmit entirely? What do you think here?
Good question. So, the USPTO is never going to allow you to expand your goods and services beyond what you put on paper when you submitted it. Okay, you are allowed to make minor alterations to a trademark application prior to it being examined. For example, if the logo you submitted wasn’t very good or you want to submit a slightly altered logo, you could potentially do that as long as those alterations aren’t material to the trademark significance of the logo or the product or services.
For example, I’ve had clients who we submitted a trademark, it got pushed back because they translated it in some abstract language to something that the client didn’t want it to, right? And so we ended up going back and changing the logo slightly, adding a hyphen to it. Okay, USPTO allowed that because it was not significant to the commercial impression. Same thing with periods and exclamation points, generally we can delete or add those if we need to, but it has to be before the trademark is examined without trademark approval, or examiner approval.
Got it. Yeah, on the patent side, it’s from a provisional you can file the invention and its scope and in the non-provisional phase when you write the new updated spec and claims you can never go broader, you can’t add new subject matter, it can only add more detail so it can be more enriched in a way, yeah, add more nuance, they kind of sound similar, right? It’s very similar. So, like the idea of adding the bicycle tire inflator or whatever that was, you know, add that, right? Can of beans but maybe you could do some hyphens, can of beans hyphens, maybe not even, I mean, they’re gonna want you to keep can of beans, right? They would allow you to say can of pinto beans, okay, right? You get more narrow and more specific, but you can never expand that to say can of beans and carrots, got it, right?
Yeah, so that’s why a lot of times clients will file an intent to use applications, which basically mean the client’s not in business yet but they’re going to be and if that’s the case then we do a much larger broader application listing a ton of different products and services because when they ultimately go to market they might only sell the can of beans, in which case we need to delete all the other things like the can of carrots and all that kind of thing, got it.