Can you refile a trademark application for the same goods and services?

Why would you file a second application for the same trademark on the same goods and services?

There may be times when you run out of options on a trademark application. In an Intent-To-Use application, for example, you may have filed a Statement of Use that cannot be retracted. So if your original specimens have been rejected, you are now stuck with trying to come up with substitute specimens that were in use in the relevant time period. Perhaps, an insurance extension might still be available in your ITU application. If the need to refile a trademark application arises, let’s discuss the potential consequences of the second application and how to best proceed.

Another possible scenario is that you have already filed the maximum number of extension requests in an ITU application, and you still have not used the mark on the identified goods or services.

Can a second trademark application for the same mark on the same goods be rejected?

If you file a second application for the exact same mark on exactly the same goods and services, your second application will be rejected if the USPTO has already taken action on the first application. If no action has been taken in either application, then both applications will be refused.

Pursuant to TMEP 703, the USPTO will not issue duplicate registrations.

What if the second application for the same mark has some overlapping goods or services?

If the second application identifies some goods or services that overlap with a first application, but also contains some different goods or services, the second filing would not result in a duplicate registration. Accordingly, the second application with the overlapping goods or services would not be refused on the basis of seeking a duplicate registration.

So a practical way to avoid a refusal in the second application is to include some different goods or services that are not identified in your first application.

What would not be a trademark application for a duplicate registration?

If you refile a trademark application with certain differences, the new filing might not violate the rule against duplicate registrations. For example, the following differences would allow for the filing of a trademark application for a similar mark that you previously registered:

  • color differences
  • different shades of color
  • word mark (standard character mark) vs. design mark (special form drawing)

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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