Proposal to Allow Amendments to Identifications of Goods and Services Due to Technology Evolution

By U.S.P.T.O.
September 5, 2014

The USPTO is seeking feedback from U.S. trademark owners, practitioners, and other interested parties about this proposal to allow amendments to identifications of goods and services due to technology evolution. Please send comments regarding the proposal to TMPolicy@uspto.gov, with the subject line “Technology Evolution.” Comments may be posted on the USPTO website. In order to ensure that your feedback may be considered, please submit it no later than November 3, 2014.

Based on user input, including at a recent roundtable, the USPTO proposes to amend its current practice to permit amendments in limited circumstances 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 due to evolving technology if the underlying content or subject matter has not changed. This change in practice takes into account the goal of preserving trademark registrations and applications in situations where technology in an industry has evolved in such a way that amendment of the goods/services in question would not generate a public-notice problem.

  • Such amendments may be permitted both pre- and post-registration upon petition to the Director under Trademark Rule 2.146, 37 C.F.R. §2.146. Amendments permitted prior to registration will likely be very rare and at least initially limited to use-based applications pending for an extended period of time.
  • The petitioner must request a waiver of the applicable “scope” rule (Trademark Rule 2.71(a), pre-registration, or Rule 2.173(e), post-registration). Trademark Rule 2.71(a) provides that an applicant may amend an application to clarify or limit, but not broaden, the identification of goods/services, and Trademark Rule 2.173(e) provides that no amendment to the identification of goods/services in a registration will be permitted except to restrict the identification or change it in ways that would not require republication.
  • Under 37 C.F.R. §§2.146(a)(5) and 2.148, the Director may waive any provision of the rules that is not a provision of the statute, when: (1) an extraordinary situation exists; (2) justice requires; and (3) no other party is injured.
  • In order to show that an extraordinary situation exists, for which justice requires a rule waiver, the petitioner must declare that:
    • based on changes in the manner or medium by which products and services are offered for sale and provided to consumers due to evolving technology, it cannot show use on the original goods/services;
    • the petitioner still uses the mark on other goods/services reflecting the evolved technology and the underlying content or subject matter remains unchanged; and
    • absent an amendment of the identification, the petitioner would be forced to delete the original goods/services from the application or registration, and thus lose federal trademark protection in relation to the underlying content of the original goods/services.
  • In order to show no third-party harm for registrations, the petitioner must abandon any “incontestable” status under §15 of the Trademark Act, 15 U.S.C. §1065, as to the evolved goods/services. The petitioner additionally must declare that it will not file (or refile, if applicable) an affidavit or declaration of incontestability under §15 as to the evolved goods/services for a period of at least 5 years from the date of amendment. For applications, a new search of Office records and republication of amendments accepted post-publication will be required, and the ability to oppose the application addresses potential third-party harm.
  • Proposed amendments must otherwise comply with any applicable rules and requirements, including current requirements regarding specificity and classification. Post-registration, the petitioner must submit a request for amendment under §7 as part of the petition.
  • In the proposed amendment, the existing goods/services for which the petitioner is no longer able to show use should be replaced with the goods/services in their evolved form. The petitioner may wish to consider, when practical and possible, amending the identification to one that does not limit protection to a particular medium in order to make the identification more flexible with regard to evolving technology.
  • The petitioner must provide dates of use for the goods/services in their evolved form. Although the original dates of use would remain accurate, the “evolved” dates would be made of record within the TSDR database.
  • Amendments that change the classification of the goods/services and change the identification from goods to services (or vice versa) may be considered.
  • A petition fee must be paid, and, for registrations, a §7 fee must also be paid.
  • 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.
  • Accepted §7 amendments to identifications of goods/services due to technology evolution will be published in the Official Gazette.

 

Examples of Acceptable and Unacceptable Amendments

 

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 to “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
  • “Cotton oven mitts,” in International Class 24 to “Silicone oven mitts,” in International Class 24
  • “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

 

Unacceptable Amendments:

  • “Downloadable software for use as a spreadsheet in the field of accounting,” in International Class 9 to “Providing on-line non-downloadable software for use as a spreadsheet in the field of business management,” in International Class 42

NOTE: The amendment would not be allowed because the subject matter of the spreadsheet software has changed from accounting to business management. An amendment would be permitted from “downloadable software for use as a spreadsheet in the field of accounting,” in International Class 9 to “providing on-line non-downloadable software for use as a spreadsheet in the field of accounting,” in International Class 42, if accurate.

  • “Printed magazines in the field of finance,” in International Class 16 to “Printed magazines in the field of finance,” in International Class 16 and “Providing on-line magazines in the field of finance,” in International Class 41

NOTE: This amendment would not be allowed because the petitioner is still using the goods in their current form and therefore would not be able to show that an extraordinary situation exists, since absent the amendment the petitioner would not lose federal trademark protection as to the goods in their current form due to technology evolution. The petitioner may file a new trademark application for the services in International Class 41.

The Author

U.S.P.T.O.

U.S.P.T.O.

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