USPTO Pilot Program Permits Modernizing Trademark Registration Coverage

Intellectual Property Update

Date: September 16, 2015

The U.S. Patent and Trademark Office (USPTO) has begun a pilot program to give owners of trademark registrations an opportunity to amend the goods and services covered by their registrations to accommodate the rapid evolution in digital technology.1 This program, which became effective September 1, 2015, permits the owner of a trademark registration to update the goods covered by their registration if the registration meets the following criteria:

  • Based on changes due to evolving technology in the manner or medium by which products and services are offered for sale and provided to consumers, the registrant cannot show use on the original goods/services.
  • The registrant still uses the mark on other goods/services reflecting the evolved technology, and the underlying content or subject matter remains unchanged.
  • Absent an amendment of the identification, the registrant would be forced to delete the original goods/services from the registration, and thus lose protection in the registration in relation to the underlying content or subject matter of the original goods/services.

Acceptable amendments to the goods listed in a trademark registration include:

  • Changing “floppy discs for computers for word processing” to “providing on-line non-downloadable software for word processing.”
  • Changing “phonograph records featuring music” to “musical sound recordings.”

Unacceptable amendments include:

  • Changing “video game tape cassettes and video game cartridges” to “video game discs and video game cartridges.”
  • Changing “phonograph records featuring music” to “streaming of audio material in the nature of music.”

These distinctions are subtle, and the USPTO will further refine them as petitions to amend registrations are filed.

While this pilot program provides a way to update trademark registrations directed to obsolete technology, such as old data storage devices, it should be noted that:

  • Before a petition to amend a registration can be granted, the USPTO must search its records for prior trademarks that are confusingly similar and publish the requested amendment for public comment.
  • The registration will lose incontestability status for the amended goods and/or services; the registrant will have to wait five years to file another declaration of incontestability.
  • The earlier form of technology must be deleted entirely from the trademark registration.
  • For registrations originally filed under 66(a) and still within the five-year dependency period, the scope of the basic registration will affect whether such an amendment is permitted at all.2

The duration of the pilot program is unknown at this time and will depend on the volume of requests received by the USPTO. In the meantime, owners of trademark registrations may want to evaluate their portfolios to determine whether any registrations would benefit from an update to reflect current technologies.

FOR MORE INFORMATION

For more information, please contact:

Theodore D. Lienesch
937.443.6958
Ted.Lienesch@ThompsonHine.com

Ashley L. Pecora
404.541.2906
Ashley.Pecora@ThompsonHine.com

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1“Announcement of Pilot Program to Allow Amendments to Identifications of Goods and Services in Trademark Registrations Due to Technology Evolution,” available at http://www.uspto.gov/trademark/trademark-updates-and-announcements/recent-postings.

2Registrations under §44(e) will be treated as any other non-Madrid Protocol based registrations, because registrations under this section are independent of the original underlying foreign registration.