New Life for Outdated Trademark Registrations
Jan. 19, 2016
On September 1, 2015, the USPTO announced a Pilot Program to Allow Amendments to Identifications of Goods and Services in Trademark Registrations Due to Technology Evolution. The intent of the program is to permit “amendments to identifications of goods/services in trademark registrations that would otherwise be beyond the scope of the current identification” with the “goal of preserving trademark registrations 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.” That is to say, where a trademark registration claims a manner or means or medium of distribution that has changed due to changes in technology, it may be possible to amend the identification of goods and services reflecting the current manner or means or medium of distribution. This is what is being termed an “evolved designation.”
Since commencing the program, the USPTO has published examples of permissible evolved designation amendments. Examples are:
Proposed ID Change
Prerecorded audio and video tapes featuring religious topics
Prerecorded CDs and DVDs featuring religious topics
Pre-recorded audio cassettes
Audio recordings featuring religious content
Pre-recorded audio/video cassettes for use in the field of pre-school and primary education
Sound and video recordings for use in the field of preschool and primary education
House mark for use with type face fonts recorded on magnetic and optical media
House mark for use with type face fonts on electronic storage media and downloaded provided by means of electronic transmission
Retail store services and on-line retail store services featuring musical instruments, bows, strings, instrument cases, sheet music, books pre-recorded video tapes and pre-recorded CDs featuring musical performances or musical instruction
Retail store services and on-line retail store services featuring musical instruments, bows, strings, instrument cases, sheet music, books, video recordings and pre-recorded CDs featuring musical performances or musical instruction
DOS-based application software to manage and forecast inventory for the direct marketing industry
Application software to manage and forecast inventory for the direct marketing industry
Videotapes, videocassettes, all on the subjects of ancient peoples and cultures around the world
Video recordings on the subjects of ancient peoples and cultures around the world
It may even be possible to change the class coverage of the registration when the proper current description of the goods or services are in a different class from what was originally registered (e.g.: printed publication are class 16 while downloadable publications are class 9).
At the end of the process the USPTO will issue a new registration certificate, maintaining the priority of the original registration.
Amendments are made via the post-registration petition to the Director provisions and the certificate of registration amendment provisions with a government fee of $200.00.
Amendments cannot be made that would expand the scope of the registration. If the registration is limited to a specific subject matter, then the amendment would continue with the same subject matter, merely altering the distribution mechanism.
The registrant must have discontinued the prior technology and the designation is removed from the description in the registration. Otherwise, the registrant would be compelled to file a new application.
The amendments must conform to the current USPTO practice requirements for proper descriptions of goods and services.
A US registration based on an International Registration (Madrid Protocol), must conform with the underlying IR during the first five years of registration. However, US registrations based on national foreign registrations are not similarly limited.
There are a number of technical requirements, including:
A request for a waiver of what is known as the “scope rule” which essentially permits only restrictions to identifications that would not require republication;
A declaration that that the registrant will not file (or re-file) an incontestability affidavit for at least five years from the amendment acceptance date for the evolved designation;
Submission of a specimen showing current use of the mark in commerce, along with the dates of first use of the evolved designation along with a declaration in support. (Note: the original first use dates would continue in the registration); and
The request for the amendment must be filed electronically.
Once accepted by the USPTO, the amended registration will be published in the Official Gazette along with other Section 7 amendments.
The USPTO has considered third party harm considerations, and in the amendment examination process will:
Conduct a search for possible conflicting marks;
Require that the incontestability status applicable to any evolved designation will not apply for five years;
Provide a mechanism for interested parties to comment about proposed amendments prior to acceptance, and
Publish the proposed amendments on its website allowing interested parties to comment for thirty days.
What Does This Mean for Trademark Owners?
Depending upon the specific circumstances, it may be more prudent to file a new application claiming not only the new delivery mechanism, as an example, but additional goods and services that may be of interest to the registrant. Often, business changes over time, and trademark owners typically expand their product offerings.
When filing either a Section 8 (use) or 9 (renewal), it may be more prudent to delete the goods and services that are no longer of interest.
Ultimately, it really depends on the exact wording in the registration, and on what goods and services the trademark owner is using the mark that will determine the best procedure to deal with changes in technology.
Depending upon how many trademark owners take advantage of the pilot program will determine if the trademark office will continue with this special procedure. So, if you have any trademark registrations that claim outdated technology (or need to claim new technology), and could benefit from this program, feel free to contact us for a consultation.