You have a successful product or service, and now you have an idea for expansion. Whether you are considering a new location, or a new product or services line, once you determine that the proposed expansion makes good business sense, the next step is to make sure your brand, or trademark, is available for the new use. Some key considerations:
2. Foreign Expansion – Trademarks are territorial, which means that a registration in the U.S. does not mean you have rights in Canada, or Europe, or anywhere else. Therefore, if the expansion is in another country, then you will need to register there. Keep in mind that while the U.S. recognizes common law use – 99% of other countries do not. No regis-tration, no rights. This is another good reason to have a U.S. federal registration – you can use it as the basis for foreign applications, making the process much easier.
3. Product or Service Expansion – Perhaps you have a restaurant, and now you want to sell food products such as a sauce or salad dressing, or perhaps you are a hotel and want to offer tour services, or open a spa. If you did a trademark search before using your mark, then hopefully that turned up any uses within your “natural zone of expansion” and you already know the mark is clear for the additional goods or services. If not, then a search is now necessary, both on the USPTO site and common law to see if there are any existing uses for your mark or a similar mark for the new products or ser-vices. If the mark is available, then you should apply to register it for the new product or service. If you see possibly infringing uses, you may or may not be able to enforce your rights. If you have a federal registration, then you have a better chance. If not, then you may need to consider a different brand for the expanded use.
As you can see, doing your trademark homework can help you expand smoothly and without unnecessary legal problems and expenses. Searching and registering the mark to reflect your current and proposed use gives you the information and rights you need to move ahead with confidence – before creating labels, signs, packaging, marketing materials, and other items for the new product, service, or location.
This summary is presented for informational and educational purposes only, does not constitute legal advice, nor create an attorney-client relationship. For a full understanding of the issues, please contact counsel of your choice.