USPTO Trademark Roundtable: Amendments to Identifications of Goods and Services Due to Technology Evolution

As part of the Trademark Operation’s continuing series of roundtable discussions to gather stakeholder views on important issues, a roundtable discussion about USPTO’s practice regarding amendments to identifications of goods and services due to technology evolution will be held on Friday, April 11, from 2 – 3 pm.  The session will be open to the public and webcast.   The event will take place in the Madison Auditorium at the USPTO offices, located at 600 Dulany Street, Alexandria, Virginia 22314.

Background

Under §7(e) of the Trademark Act, a registration based on an application under §1 or §44 of the Trademark Act may be amended for good cause upon application of the owner and payment of the prescribed fee, provided the amendment does not materially alter the character of the mark.[1]  15 U.S.C. §1058(e).  With respect to the identification of goods/services, an identification may be amended to restrict the identification or change it in ways that would not require republication of the mark.  See 37 C.F.R. §2.173(e).  However, no goods/services may be added to a registration by amendment.  Moreover, under current USPTO practice, changed circumstances, such as new technology, will not render acceptable an amendment that is not otherwise permissible.  TMEP §1609.03.

Recently, the USPTO has received a number of requests for amendment under §7, as well as inquiries from registration owners, seeking to amend identifications of goods/services due to changes in the manner or medium by which products and services are offered for sale and provided to consumers, particularly because of evolving technology.  In some cases, these requests have also sought a corresponding change in classification.

Examples of these requests include amending:

• Class 9 items featuring music (e.g., audio cassettes, audio tapes, disks, diskettes, vinyl records, etc.) to musical sound recordings in Class 9;

• Class 9 video game discs to entertainment services, namely, providing on-line video games in Class 41;

• Class 9 computer software programs to providing software as a service in Class 42;

• Class 16 printed magazines to providing on-line magazines in Class 41;

• Class 36 telephone banking services to on-line banking services in Class 36;

• Class 41 entertainment services such as providing cable television entertainment programs to providing television entertainment via the Internet in Class 41; and

• Class 41 rental of video tapes and motion pictures to provision of non-downloadable films via a video-on-demand service in Class 41.

The USPTO previously has taken the position that such amendments impermissibly expand the scope of a registration, in contravention of Trademark Rule 2.173(e).  In accordance with §7(e), the identification of goods/services in a registration determines the scope of all permissible amendments (and the identification may not be broadened in a way that would require republication), due to the public policy objective of ensuring notice of the coverage afforded under a registration.

However, registration owners seeking to amend their identifications in this matter have countered that public notice would not be adversely impacted because the core goods/services remain the same.  They further assert that merely changing the medium for the goods/services would not alter or expand the scope of protection granted under a registration.

Request for Comments

In response to the requests for amendment under §7, the USPTO sought feedback from U.S. trademark owners, practitioners, and other interested parties regarding their views about these proposed amendments and USPTO policy on this subject by posting a request for comments on the USPTO website.  The extended comment period lasted from September 6, 2013 – December 2, 2013.

Eighteen external comments were received in response to the request for comments.  Of the eighteen comments received, three were from major intellectual property stakeholder organizations, three were from corporate in-house counsel, nine were from attorneys and/or law firms, and three were from individuals.  The comments can be found on the USPTO website.

In response to the request for comments, a majority of respondents believe the USPTO should allow amendments to identifications of goods/services based on changes in the manner or medium by which products and services are offered for sale and provided to consumers both pre- and post-registration.  Additionally, a majority support not limiting such amendments to certain goods, services or fields or distinguishing between phased out products and those for which the technology is evolving.

However, there were considerable differences in opinions regarding the type of showing that should be required for such amendments and if a special process should be required to file and examine the amendments.  Moreover, there were mixed opinions regarding whether the scope of protection in an identification is expanded if such amendments are permitted, if the original dates of use remain accurate if such amendments are permitted, and the impact of such amendments on the public policy objective of ensuring notice of the coverage afforded under a registration.

Questions for Roundtable

Based on the positive feedback received in response to the request for comments, the USPTO is interested in continuing the dialogue about the allowance of such amendments, and is hosting a roundtable to further discuss the previous questions, reprinted below, as well as the acceptability of such amendments, related policy considerations, and the logistics of implementing a process for such amendments.

A panel will address the following questions at the roundtable:

1.  Do you think the USPTO should allow amendments to identifications of goods/services in registrations based on changes in the manner or medium by which products and services are offered for sale and provided to consumers?

2.  If such amendments are permitted, should they only be allowed post registration to account for changes in technology following registration, or should similar amendments be permitted in applications prior to registration (see 37 C.F.R. §2.71(a), stating that prior to registration, an applicant may clarify or limit, but not broaden, the identification)?

3.  What type of showing should be required for such amendments?  Should a special process be required to file such amendments, apart from a request for amendment under §7?

4.  Should such amendments be limited to certain goods, services or fields (such as computer software, music, etc.), and if so, how should the determination be made as to which goods, services or fields?

5.  Should a distinction be made between products that have been phased out (such as eight-track tapes), as opposed to products for which the technology is evolving (such as on-line magazines), or should amendments be permitted for both categories of products?

6.  Do you believe the scope of protection in an identification of goods/services is expanded if an amendment is allowed to alter the medium of the goods/services?

7.  Would the original dates of use remain accurate if such amendments are permitted?

8.  What would the impact of such amendments be on the public policy objective of ensuring notice of the coverage afforded under a registration?