The United States Patent and Trademark Office (USPTO) has launched a pilot program to allow amendments to goods/services in trademark registrations that would otherwise be beyond the scope of current specifications.
Typically, once a trademark has been registered for particular goods/services, it is not possible to later amend those goods/services beyond the current identification. However, this does not reflect the world of rapidly changing technology – goods and services may be quickly phased out in favor of their modern counterparts. When the new technology did not match the original goods/services, the trademark owner was forced to forego the old registration and file a new application, thus giving up an earlier date of use.
Under the new pilot program, trademark owners will be able to swap out the original outdated goods/services with the updated goods/services reflecting the technology advancements. This enables the trademark owners to maintain the existing registration and extends the protections afforded by the existing registrations.
While the new pilot program allows for amendments beyond the current identification, it is not without limitations. First, the amendment is allowed only in cases where the trademark owners can no longer show use on the goods/services in their original form due to evolving technology. Also, the trademark must still be used in connection with goods/services that reflect the same underlying content or subject matter. Further, any “incontestable” status that applied to the original goods/services will not apply to the newly amended goods/services; the trademark owner will have to file a declaration of incontestability five years following the modification to the “evolved” goods/services. Lastly, although the original dates of use would remain in effect, the “evolved dates” will be noted and made of public record, which will likely raise potential priority disputes.
Below are some examples the USPTO provided of acceptable amendments:
Original Identification Amended Identification
Phonograph records featuring music Musical sound recordings
Floppy discs for computers for word processing Providing on-line non-downloadable software for word processing
Printed books in the field of art history Downloadable electronic books in the field of art history
Downloadable software for use in database Software as a service (SAAS) services featuring
Management software for use in database management
The new pilot program is good news for trademark owners as it acknowledges the need to accommodate the rapidly evolving technology in the world today. The duration of the pilot program will depend on the volume of requests. Accordingly, trademark owners who are scheduled to renew their trademarks in the near future should take advantage of this program.