I am trying to decide if I need to add class 25 to my class 35

[dalechampion]

What is the name of your state (only U.S. law)? California My trademark is the name of a famous cowboy of the old west in Wyoming, an historical figure. I hold two trademarks, one of his name and the other his signature, class 35 service mark. I do cowboy related products online currently, including t shirts and hats, etc. Just recently a local WY rock band named itself after my trademarked cowboy. I am glad they did for reasons that it will help promote my brand. I want to know how much jurisdiction I have over the use of the name and also I want to offer them a licensing deal so they can sell merchandise at their shows. I am fairly certain that I own exclusive rights to this name, I am specific in my application. Do I need a class 25 also, I will not be doing any manufacturing at this time. I will be performing within the lines of my mark, wholesaling and retailing shirts at live events and soon in stores as well as online
Thank you

 

[FlyingRon]

You can decide to do that or not. Probably wouldn't hurt. You've got common law trademark rights already since you're using it that way in commerce. Alas, they can protest your mark's registraiton in that area (and may have a case) or they can just ignore your attempts to extract license fees from you and then argue that they have as much right to that mark as you. It would take court action to press that issue.

 

[quincy]

What is the name of your state (only U.S. law)? California My trademark is the name of a famous cowboy of the old west in Wyoming, an historical figure. I hold two trademarks, one of his name and the other his signature, class 35 service mark. I do cowboy related products online currently, including t shirts and hats, etc. Just recently a local WY rock band named itself after my trademarked cowboy. I am glad they did for reasons that it will help promote my brand. I want to know how much jurisdiction I have over the use of the name and also I want to offer them a licensing deal so they can sell merchandise at their shows. I am fairly certain that I own exclusive rights to this name, I am specific in my application. Do I need a class 25 also, I will not be doing any manufacturing at this time. I will be performing within the lines of my mark, wholesaling and retailing shirts at live events and soon in stores as well as online
Thank you

If you want to retain your rights in your trademarks, you need to enforce these rights. You enforce your rights by letting all who use your marks without your authorization know that the name and signature are federally registered and rights must be licensed through you to market for sale any goods using these marks.

You can have a licensing agreement drafted if you want to partner with the band to sell merchandise at their concerts. It is best if you have a trademark attorney working with you to fashion the letter to the band and to create a license that meets both your needs and the needs of the band.