» Fri Apr 08, 2011 1:38 am
So I called the USPTO again, and this time I got a lovely lady who was very helpful:
Me:
"Here is the old mark, 77017500 and here is the new mark, 85067861. Why did they file for this new mark?"
Ashley:
"These are two separate trademarks for goods and services. They added several things that were not included in the original application, and once you file an application for a trademark, nothing can be added or removed from that application; a new application must be submitted."
Me:
"So does this mean that they still have to submit a statement of use for the original mark in order to fulfill the requirement?"
Ashley:
"Yes, but they will probably just let it die. The new application includes essentially all of the same items as the original application, but has more added to it. If they want those additional items in their mark, they need to provide the statement of use for the new mark."
Me:
"So essentially, it's one or the other, but not both?"
Ashley:
"Yes."
Me:
"Okay, so could they then go through the same process of extensions for the new mark, up until the fifth extension?"
Ashely:
"Yes."
Me:
"So just so I am clear, a company can basically keep applying for the same mark over and over again to give them more time?"
Ashely:
"No, this application has different items in it, and therefore it is a different trademark application altogether. They have to either provide a statement of use for the first mark, or allow it to die, or they can go through the process with this new mark, or allow it to die, or the only other option is to make another application with yet still different items listed as the intended goods or services."
Me:
"Tricky."
So there you have it, folks. As best as I could get it!