Start here
The Zest

From candles to skincare: expanding a wellness brand without losing your name

Written by

Your registration covers the goods listed in it, and you can't amend it to add new ones. A candle brand moving into skincare files a new application for the skincare, usually in Class 3, and the best time to file is before launch, using the intent-to-use basis. The candle registration may still help if someone else uses a similar name on skincare, but it isn't a substitute for owning the name in the new category.

What your registration actually covers

A federal registration is "prima facie evidence" of your exclusive right to use the mark "in connection with the goods or services specified in the certificate." That's 15 U.S.C. § 1057(b). The list of goods in your registration is the list the presumption attaches to.

Candles sit in Class 4, which the Nice Classification describes as including "candles and wicks for lighting." Skincare sits in Class 3, "Non-medicated cosmetics and toiletry preparations." Different products, different classes, and in your registration's case, a different list.

Why you can't stretch the registration

This is the part founders don't expect. You can change a registration's list of goods, but only in one direction. The USPTO rule says no amendment to the identification in a registration "will be permitted except to restrict the identification" or to change it in ways that wouldn't require republishing the mark. That's 37 C.F.R. § 2.173(e). The TMEP, the manual USPTO examining attorneys follow, puts it plainly: goods "may not be added to a registration by amendment."

The same rule applies to pending applications. Under 37 C.F.R. § 2.71(a), you can amend an application to "clarify or limit, but not to broaden," the identification. The TMEP explains why. A filing gives you a constructive use date, and letting applicants broaden later would let them claim that date for goods they never listed. You can go from general to specific. You can't go from specific to general.

So if your candle application is still pending, you can't add body oil to it either.

The new application

The fix is a new application for the new goods. If skincare isn't on the market yet, the Lanham Act lets you file based on a "bona fide intention, under circumstances showing the good faith" of the applicant to use the mark.

Filing early matters because of what the filing date does. Once the mark registers, the application filing date counts as "constructive use of the mark, conferring a right of priority, nationwide in effect." That's 15 U.S.C. § 1057(c). It's contingent on the mark actually registering, but it means your priority in skincare can date back to the day you filed, not the day the first jar shipped.

The time you get to launch after approval is set by statute. Once the USPTO issues a notice of allowance, you have six months to file a Statement of Use. You can get one more six-month extension on request, and further extensions for good cause, "for periods aggregating not more than 24 months." I go through how that works in the article on intent-to-use applications.

The current USPTO fees: $350 per class to file, $150 per class for the Statement of Use, and $125 per class for each extension.

Does the candle registration protect you in skincare?

Partly, and it depends. When the USPTO decides whether two names conflict, the goods don't have to be identical or even competitive. They only have to be related "in some manner," or marketed in a way that could lead buyers to a mistaken belief that they come from the same source.

Whether candles and skincare are related for a given name is a question of evidence. The TMEP says third-party registrations can suggest that goods come from a single source when they're based on use in commerce. If lots of brands register one name for both candles and skincare, that helps show the two are related.

This cuts both ways. Your candle registration might be cited against someone else's similar skincare filing. And a skincare brand that registered a similar name first might be cited against yours. That second possibility is why I'd never assume the name is open in a new category just because you own it in the first one. I wrote about this in the article on the same name in a different industry.

A sequence that keeps your name intact

For a brand planning a new product line, the order of operations looks like this:

  1. Search the name in the new category. A conflict in skincare is a separate question from your candle clearance. The article on searching before you file covers what that search looks at.
  2. Decide the scope. List the actual new goods in plain words. You can narrow later, but you can't add.
  3. File on intent before the announcement. Your priority date is your filing date, not your launch date, so the filing should come before the public hears about the line.
  4. Launch, then prove use. File the Statement of Use with a specimen showing the name on the new products.
  5. Do it again for the next category. Each expansion is its own application, or its own class in a new multi-class one.

What this means for your brand

Think of each registration as covering a fenced area, not the whole field. Every time the brand steps into a new kind of product, the question is whether that area is already fenced. The earlier you file for the new goods, the earlier your priority date, and the less room someone else has to get there first.

If you're planning a product expansion and want to see how a search and new filing work, the packages are on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

Start here