As technology evolves now so can your trademark

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As businesses evolve some find that their trademark registrations become obsolete—specifically, the goods and services identified on the registrations may no longer be applicable to their current business. United States Patent and Trademark Office (USPTO) rules generally prohibit the amendment of the goods and services identified in an existing trademark registrations in a manner that is deemed to broaden the originally filed for goods or services. But earlier this month, the USPTO announced a new pilot program that will create a limited exception to this rule in cases where trademark registrations have become obsolete as the result of changing technology. Specifically:

“Amendments will be permitted where they are deemed necessary because evolving technology has changed the manner or medium by which the underlying content or subject matter of the identified products and services are offered for sale or provided to consumers.”

Trademark owners may now petition to broaden their registrations’ identified goods and services where such changes are the result of transitioning from “old” to “new” technology.

In the United States, trademark owners must routinely submit declarations of continuing use as to the goods and services identified in their trademark registrations. If a registrant can no longer show trademark use in connection with the identified goods and services, the registration becomes vulnerable to cancellation. Historically, this led trademark owners to the costly (and sometimes risky) endeavor of abandoning the registration with outdated goods or services, and filing a new application to cover any updated or replacement goods and services. This pilot program demonstrates the efforts made by the USPTO to accommodate changes required by rapidly evolving technology.

While this opportunity will be valuable to many registrants, the USPTO has made clear, among other requirements, that:

 “Amendments will only be permitted in situations where the registrant is no longer able to show use of the mark with the goods/services in their original form due to evolving technology.”

Additionally, the USPTO has carefully outlined the circumstances in which amendments will be accepted. In its announcement, the USPTO provided several examples of amendments that would meet these requirements:

Original identification

Acceptable Amended identification

Phonograph records featuring music (class 9)

Musical sound recordings (class 9)

Prerecorded video cassettes in the field of mathematics instruction (class 9)

Video recordings featuring mathematics instruction (class 9)

Floppy discs for computers for word processing (class 9)

Providing on-line non-downloadable software for word processing (class 42)

Downloadable software for use in database management (class 9)

Software as a service (SAAS) services featuring software for use in database management (class 42)

Printed books in the field of art history (class 16)

Downloadable electronic books in the field of art history (class 9)

Telephone banking services (class 36)

On-line banking services (class 36)

Entertainment services, namely, an ongoing comedy series provided through cable television (class 41)

Entertainment services, namely, an ongoing comedy series broadcast via the Internet (class 41)

The pilot program could affect trademark owners whose offerings are now provided in a different form or medium than when their trademark registrations first issued. However, trademark owners should take care to carefully evaluate whether their existing description is broad enough to encompass any evolved technology that may be used to provide their products. As with every new program, there are benefits and risks and much of that remains to be seen.

The duration of the pilot program will depend on the volume of requests. Accordingly, trademark owners may wish to review their trademark portfolio to determine if they should take advantage of this program, sooner rather than later.

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