I have a registered trademark on the name of a custom text editor software that I already sell. Can I use the same trademark (with (R) sign) on one of the features of a new software I am developing to bring up editing window? In other words, functionality is the same as old software, but on the new software it's simply a menu item (which is my registered mark name) you click which pops up a "child window". (Sort of like how you can double click to start Excel from Windows Desktop, but then within Excel you can open an existing XLSX file through File Menu.)
Second question - let's say I have a similar need in the future to use my new software as a menu item (essentially I'll advertise it as a feature) in a future software I intend to develop. Should I have my new software name registered as a "software" or a "feature"? Or are they the same in eyes of trademark laws?
Thank you, happy Thanksgiving!
Those are good questions but indicate a possible fundamental gap as compared to what trademarks must do. You have a registration for a mark that identifies to consumers who supplies the product. Uses that convey consistent messages are consistent with trademark use. But your questions tend to address what the product does, not who makes it. That's a good way to lose a trademark. But it will all depend on what consumers see, not whether or not it can be described on Avvo. Have a trademark lawyer review the actual presentation and provide a confidential opinion.
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I think you're referring to "sub-brands," which uses DIFFERENT trademarks, and is a way of linking products so it's clear what the source is, while establishing/maintaining individual identity and trademark.
So for example, you'd have, for the new sub-brand, "XYZ, a trademark of ABC." When this is done right, things like type and size of the font used in word marks need to be coordinated, so as not to damage the strength of the original mark or lose the affiliation between brand and sub-brand.
See your own IP lawyer to discuss why you'd want to use the same trademark, and the rest of the details in your situation.
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If you are incorporating your text editor into a piece of software, you may use your trademark for the text editor portion of the new more encompassing software. If that is the only place where your software will exist (the standalone text editor will no longer be offered), you will need to show use of the text editor in the more encompassing software in order to maintain the registration. But owning a registration for something does not require you to maintain that same business model forever - you do not always have to sell that something the same way. It would be best to discuss this with your IP attorney to make sure you are doing everything you can to maintain the validity of the registration going forward.
My answer is general information, neither constituting legal advice nor resulting an attorney-client relationship.
You received some good responses. I would want to better understand your concerns before chiming in.
Before you commit to anything, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Legal, LLC on the basis of this posting.
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