Second Chances – USPTO Trademark Pilot Program Allows for Amendments Based on Technology Evolution
The USPTO recently launched a pilot program to allow amendments in limited circumstances to the identification of goods or services in existing trademark registrations, in order to account for changes in technology formats. The program provides new hope for the maintenance of trademark registrations for businesses whose products or services have changed due to evolving technology, and may particularly benefit companies in the fields of banking, entertainment, music, technology/software and publishing. If registered rights are potentially in jeopardy due to an inability to prove that a mark is currently used in the technology format originally identified in a trademark registration, trademark owners should consider whether their rights could be preserved under the pilot program.
The duration of the program will depend on the volume of requests. At the conclusion of the pilot period, the USPTO will assess whether such amendments should be permitted on a permanent basis.
It is important to note that: (1) amendments are only permitted post-registration via a petition to the Director; (2) amendments must relate to the goods or services for which the registrant can no longer show use due to evolving technology; and (3) the amendment must replace the existing goods or services for which use can no longer be shown with the goods or services in their evolved form; if the registrant continues to use the mark with the goods or services in their original form, a new trademark application must be filed to seek registration for the evolved goods or services.
The USPTO will post a non-exhaustive list of acceptable amendments under the program. Set out below are some examples of amendments that the USPTO has indicated would be successful. These examples relate primarily to sound recordings, print publications and software, some of the industry sectors considered most likely to be affected by the delivery of goods or services based on evolving technology:
- “ 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
- “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
Additional requirements for the petition and a sample declaration to be included in the petition can be found here.