trademarks: my business name is the s...

trademarks: my business name is the same as my product name

business owner

Teaneck, NJ

#1 Jun 25, 2009
I have submitted a trademark application for my business name, let's call it "Widget X" a few months ago and registered it as a service mark with the registered class of "services, providing widgets and more widgets."

I am now wondering if I should have also included another class for the PRODUCT itself, which has the same name as the business... if i should have done one class for the SERVICE "Widget X" and another class for the PRODUCT "Widget X."

My service application is currently being processed and I probably won't hear back for a few more months. What should my course of action be? Should I just submit another one right now for the PRODUCT even though the service one has not yet been approved? Should I wait?


Philadelphia, PA

#2 Jul 6, 2009
For broader protection, you should seek registration for the products as well. The sooner you do so, the better because the sooner you will receive a filing date. The filing fee is the same (e.g.$325 per class for a regular filing) so from a monetary standpoint you did not really lose anything by not including it in the original application. What you "lost" is time: the product trademark will have a later filing date than the services trademark, and you will probably be assigned a different Examining Attorney. The only advantage to waiting to see what happens with the first one is that you will be able to see what the outcome is of the first one. For example, if it does not go through because of a conflicting trademark, then you may decide not to bother with the product trademark registration if you think you will encounter the same problem, and you will have saved yourself the expense of the filing fee. If it were me, since it was clearly important enough to file the trademark for the services, I would go ahead and file the application for the products now rather than wait to see what happens with the first one.

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