New USPTO Procedure Enables Amendments to Registration to Reflect Technology Evolution

USPTO Pilot Program Allows Amendments to Identifications of Goods and Services in Existing Trademark Registrations Necessitated by Technology Evolution

In a world of rapidly changing technology trademark registrants are often faced with a situation where the registration covers goods/services reflecting how a mark was used at the time of registration, but advancements and evolution of technology change use of the mark over time. When the “evolved” use of the trademark no longer matches the original goods/services as registered two problems arise. First, use of the mark on the evolved goods/services may no longer support the registration and the original goods/services will need to be deleted or the registration allowed to lapse altogether. Second, the trademark registrant may have difficulty successfully asserting the registration against third party infringers and may lose the benefit of “public notice” presumed with a trademark registration. To address the “evolving technology” conundrum the USPTO commenced a pilot program on September 1, 2015, providing trademark registrants the ability to seek amendment of the original goods and services as registered when evolving technology changes the “manner or medium by which the goods and services are offered for sale or provided to consumers.”

Under the right circumstances, the pilot program enables trademark owners to swap out original goods/services outdated by technology advancements with updated goods/services reflective of the current, evolved use of the mark. To preserve the “public notice” function the trademark registration the underlying subject matter at the heart of the registered goods/services cannot change; only its presentation to consumers. Adopting a principle from copyright law, the underlying idea does is not changed - only the expression. The USPTO provided the following examples of acceptable amendments:

-“Phonograph records featuring music” in International Class 9 to “Musical sound recordings” in International Class 9

-“Prerecorded video cassettes in the field of mathematics instruction” in International Class 9 to “Video recordings featuring mathematics instruction” in International Class 9

-“Floppy discs for computers for word processing” in International Class 9 to

-“Providing on-line non-downloadable software for word processing” in International Class 42

-“Downloadable software for use in database management” in International Class 9 “Software as a service (SAAS) services featuring software for use in database management” in International Class 42

-“Printed books in the field of art history” in International Class 16 to “Downloadable electronic books in the field of art history” in International Class 9

-“Telephone banking services” in International Class 36 to “On-line banking services” in International Class 36

-“Entertainment services, namely, an ongoing comedy series provided through cable television” in International Class 41 to “Entertainment services, namely, an ongoing comedy series broadcast via the Internet” in International Class 41

Previously, amendments of this nature ran the risk of being impermissible modifications to the scope of the registration. This change to U.S. trademark practice will preserve existing trademark registrations rather than forcing owners to file new applications covering the updated, evolved goods/services and be faced with deleting goods/services from registrations or being forced to allow registrations to lapse.

In its announcement of the pilot program the USPTO offered the following points on Amendment Requirements:

1. Amendments will be permitted post-registration by petition, but not prior to registration.

2. The petition procedures only apply to amendments not permitted under current USPTO rules of practice because they would be considered beyond the scope of the current goods/services. Amendments permitted under current practice remain unaffected by these new procedures.

3. Amendments will only be permitted when the registrant is no longer able to show use of the mark with the original goods/services due to evolving technology. The registrant must delete the goods/services no longer used with the mark due to the technology evolution and add the updated goods/services in their evolved form. If the registrant is continuing to use the registered trademark with the original goods/services, a new trademark application can be filed in order to seek registration covering the evolved goods/services.

4. The USPTO may consider amendments changing the classification of the goods/services or changing from goods to services (or vice versa). However, proposed amendments must comply with all applicable rules and requirements, including current requirements regarding specificity and classification.

5. U.S. registrations under Trademark Act Section 66(a) are based on the underlying International Registration for a period of five years from the international registration date. During this period, the scope of the International Registration will factor into USPTO acceptance of the proposed amendment.

6. Because U.S. registrations under Trademark Act Section 44(e) exist independent of the underlying foreign priority registration, the scope of the foreign registration will not factor into USPTO acceptance of the proposed amendment.

7.The USPTO will post on its website a non-exhaustive list of acceptable amendments under the new practice, to be updated periodically as amendments are permitted.

The USPTO also offered the following guidelines on preparing petitions requesting amendments pursuant to the pilot program:

1. The petition must meet all formalities requirements and payment of the prescribed fee.

2. The registrant must request a waiver of the “scope” rule, which prohibits amendment to the registered goods/services except to restrict the goods/services or change them in a way not requiring re-publication.

3. The USPTO may waive any non-statutory rule when: (1) an extraordinary situation exists; (2) justice requires; and (3) no other party is injured.

4. To demonstrate an “extraordinary situation” supporting a rule waiver the registrant must declare, to the best of its knowledge, that:

1. The registrant must additionally declare that it will not file (or refile, if applicable) an affidavit or declaration of incontestability (under Trademark Act Section 15) as to the evolved goods/services for a period of at least five years from the date of acceptance of the amendment. Any “incontestable” status applying to the original goods/services deleted by the amendment will not apply to the added goods/services in their evolved form.

2. As part of the petition the registrant must: (a) submit an example of current use of the trademark in U.S. commerce on or in connection with the goods/services in their evolved form; (b) provide dates of use for the goods/services in their evolved form; and (c) submit an affidavit or signed declaration verifying the information and dates in the petition. Although the original dates of use would remain in effect in the registration, the “evolved” dates would be made of record within USPTO electronic records.

3. The registrant must submit as part of the petition a request for amendment meeting the requirements of Trademark Act Section 7(e), including payment of the prescribed fee. Accepted amendments will be published in the USPTO’s Official Gazette with other accepted Section 7 amendments, and an updated registration certificate will issue.

4.Registrant’s must file their petitions and requests for amendment under Trademark Act Section 7 together through the USPTO’s electronic filing system using the “Petition to the Director under Trademark Rule 2.146,” form number 3. For proper handling, the petition should be captioned “Petition to Allow Amendment Due to Technology Evolution.” The required specimen must be attached to the form and both the “petition fee” and §7 “filing amendment to registration fee” must be provided. The declaration may be used to support both parts of the filing.