Do you see an issue with my trademark application?

Trademark applications have to be very specific, and the registrations themselves protect only what's been applied for. You can't add products later under the same mark, because when you apply, you have to describe your goods/services - the USPTO won't allow you to define your goods/services as "and other things."

Trademarks are meant to protect goods being made or services being rendered, or with the intent to be, and you can't even expand on a description of your goods/services once you've apply, let alone after you've gotten a registration.

Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.

There is no way to answer your questions without seeing the mark you are considering, doing a comprehensive search to see if there is anything conflicting, etc. If this is important to you then you need to hire a trademark attorney. A lot of trademark attorneys, myself included, charge flat fees.

Good luck.

You want to use someone else's registered trademark? Hmm. From the get-go a very bad start.

There are only two reasons to use someone else's trademark: (1) you want catch the eye of potential customers in your marketplace because they will recognize the trademarked phrase and, as a result, will consider buying your product or (2) you want to use the two-word phrase because it is unknown, or nearly so, in your marketplace and it will draw the attention of potential customers.

The first is unlawful. If that's the case, stop now and re-think your branding strategy.

The second may be lawful, but may not be - depending on how "related" the goods are that you want to sell when compared to the goods that are already being branded with that trademark. In short, it may be lawful to use (and register) as a trademark a two-word phrase that is already being used (and registered) as a trademark if the latter user uses the phrase to brand un-related goods or services. "Happy Days" can be used and registered for hotel services by one person, for example, and then used and registered by another for sunscreen. Only a trademark attorney can pass on whether you may lawfully use and register the phrase that you're considering.

Joining the two words into a compound mark does not change the analysis (in the vast majority of cases). Also, putting another word at the end of the trademarked phrase which "names" your product is irrelevant. That appended word will not be considered, or given very little weight, in the analysis as to whether your use of someone else's registered trademark will likely cause confusion in the marketplace.

Moreover, I think it would be a very rare case indeed where "A + B + C" can lawfully be used or registered as a trademark to brand the same or similar goods or services that are already branded "A + B" by another. "Cocoa Puffs Cereal" clearly infringes the trademark "Cocoa Puffs" if the latter is used to brand cereal -- or most likely ANY food product.

The point of a trademark is that it tells potential customers that the product comes from ONE particular source. Using someone else's trademark to brand your products flies in the face of that very fundamental goal. As a business proposition and as a legal matter it is a bad idea.

What you are attempting to do is possible. I have done this for clients before. I think what you may be confusing is that the trademark office has different classes and if you trademark your mark in, say cereal, and waffles falls under another international class then you will need to file again. I highly suggest that you hire someone who knows what they are doing because if you botch the application up then you are wasting time and money (i.e., the trademark office doesn't even start reviewing applications until 6 months after the application is filed. If you get an incurable office action then you have to start all over).

Thank you,

Richard

You are right in asking your question as a hypothetical. That way we can discuss it on a public forum such as this. I understand that you have in mind a different two words than COCOA PUFFS for your trademark.

Also, before the federal government actually grants the trademark registration (typically about a year after the application is filed) it is unlawful to use the encircled-R symbol with the trademark. That symbol is reserved for REGISTERED trademarks. But from the getgo, one may put a TM symbol there instead.

You write: 'The USPTO says I would have to trademark all of "Cocoa Puffs Cereal" and file a separate application for "Cocoa Puffs Waffles."' However, I can't tell whether you are reading some general guidance from the government website, or if you have filed an application and received an Action from an Examiner objecting to your attempt to register two different marks.

In general, a business can use a single trademark with different products. If the productgs are going to be introduced into the marketplace at about the same time, the trademark application could recite the trademark, e.g., COCOA PUFFS, and both or all of the goods, e.g. "cereal and waffles." In fact, it might alternatively recite as the goods a generic term such as "breakfast foods" or perhaps "breakfast foods made of wheat." If the goods in a list all fall within the same government-identified "class," then the applicant pays a single filing fee. If the goods fall within, say, two classes, then the applicant pays a double filing fee to the government. The words CEREAL and WAFFLES would not need to be considered part of the trademark, as they seem to be generic terms describing the goods.

For further info, see the Elman Technology Law website and the official government Trademark Manual of Examining Procedure, links posted below.

DISCLAIMER: This online conversation does not establish an attorney-client relationship. For legal advice you can rely on, consult an attorney and disclose confidentially all the pertinent facts.