If you’ve registered a trademark, you may wonder whether you can expand your business by selling products or services that weren’t listed in your original application. The answer is yes—you can sell additional products, but your trademark protection will not automatically extend to those products. To ensure your brand is fully protected as your business grows, you may need to take additional steps.
Here’s a closer look at how trademark protection works, the risks of selling products outside your registered scope, and what you can do to expand your trademark coverage.
What Does Your Trademark Protect?
When you file a trademark application with the United States Patent and Trademark Office (USPTO), you’re required to specify the goods or services your mark will cover. These descriptions define the scope of protection for your trademark. For example:
• If your trademark is registered for “athletic shoes” in Class 25, it protects your brand name or logo for shoes but not for unrelated items like hats or backpacks.
While you can legally sell additional products outside the scope of your registration, your trademark rights do not extend to those new products unless you take further action.
Risks of Selling Products Outside Your Trademark Registration
1. Limited Legal Protection
If your trademark is not registered for the additional products, you may have difficulty enforcing your rights if a competitor uses your brand name or a similar mark in connection with those products.
Example:
If your trademark is registered for “handbags” but you later start selling “sunglasses,” another company could sell sunglasses under a similar name without infringing on your trademark rights.
2. Consumer Confusion Risks
Selling products outside your trademark’s scope may increase the risk of consumer confusion if other businesses use similar branding for those products.
3. Missed Opportunities for Market Exclusivity
By not extending your trademark to new products, you leave the door open for competitors to capitalize on your brand name in those categories.
4. Challenges in Licensing and Franchising
If you plan to license or franchise your brand, limited trademark coverage can complicate these arrangements, as your legal rights won’t encompass all the products you’re offering.
When Should You Expand Your Trademark Coverage?
You should consider expanding your trademark registration if:
• You’re launching a new product line that will use your existing brand name or logo.
• You’re entering a new industry or market segment.
• You want to prevent others from using your brand for similar or related products.
Example:
If you originally registered your trademark for “sports drinks” in Class 32 but are now adding “protein bars,” filing a new trademark application or amending your existing coverage ensures your brand is protected for the expanded product line.
How to Expand Your Trademark Protection
1. File a New Application
To add coverage for new products or services, you’ll need to file a new trademark application with the USPTO. This is the most common approach since trademarks cannot be retroactively expanded to include additional goods or services.
2. Conduct a Trademark Search
Before filing, conduct a search to ensure your trademark is available for the new products. This helps avoid conflicts with existing marks in the new category.
3. Use Intent-to-Use Applications
If you’re planning to sell new products but haven’t started yet, you can file an intent-to-use application to secure rights for the new products before they’re available.
4. Monitor Your Trademark Portfolio
Regularly review your registered trademarks to ensure they align with your current and future business activities. Expanding coverage proactively can prevent future issues.
Can Common Law Trademark Rights Protect New Products?
If you’re selling products not covered by your registered trademark, you may still have common law rights for those products. These rights arise automatically from your use of the trademark in commerce but are:
• Limited in Scope: Common law rights typically only protect your mark in the geographic areas where you sell the products.
• Weaker in Legal Disputes: Without federal registration, enforcing your rights against infringers is more challenging.
Tip: Common law rights can provide some protection, but federal registration offers stronger and more comprehensive safeguards.
Examples of Trademark Expansion in Action
1. A Clothing Brand Expanding to Accessories
A trademark registered for “t-shirts and jeans” doesn’t automatically cover hats or scarves. If the brand starts selling these items, they’ll need to file a new trademark application for “hats, scarves, and gloves” to protect the expanded product line.
2. A Beverage Company Adding Food Products
A company with a trademark for “sports drinks” decides to sell energy bars. To ensure protection for the new products, the company files an additional application covering “energy bars and protein snacks.”
3. A Tech Company Introducing New Software
A tech company initially registered its mark for “computer hardware” but later develops mobile apps. Filing a new application for “mobile application software” extends its trademark protection to the new offerings.
Tips for Expanding Trademark Protection
1. Be Proactive
File a new trademark application as soon as you plan to introduce new products or services under your brand name.
2. Think Long-Term
When describing your goods or services in the initial application, consider including categories you plan to expand into in the near future (as long as you have a bona fide intent to use the trademark for those products).
3. Consult a Trademark Attorney
An experienced attorney can help identify gaps in your current trademark coverage and guide you through the application process for new products.
Conclusion
While you can sell products that aren’t listed in your original trademark application, doing so without expanding your trademark protection leaves your brand vulnerable. Federal registration ensures your trademark rights extend to all the products you sell, giving you stronger legal protections and helping you maintain exclusivity in the marketplace.
If you’re planning to expand your product line, consider filing additional trademark applications to safeguard your brand. Consulting a trademark attorney can help you navigate this process, ensuring your business stays protected as it grows. Your brand is an asset—make sure it’s fully protected across all your offerings.