The USPTO’s Welcome Initiative for Technology-Driven Changes in Registered Trademark Use.
Under a pilot program announced by the United States Patent and Trademark Office (USPTO) on September 1, 2015, trademark owners may now be able to maintain federal trademark registrations previously at risk of cancellation because of changes in their products and services attributable to the evolution of technology. If your business or organization has modernized its products or services, or the delivery method of its products or services, to accommodate advances in technology, we recommend a review of the company’s US trademark portfolio to assess whether the company can take advantage of this pilot program. Doing so may allow your business or organization to salvage existing, but otherwise potentially unsupportable, registrations.
Under USPTO rules, goods and services must be identified with specificity in all federal trademark registrations. Those identifications may be so specific that they do not reflect how quickly the goods and services may change due to technology advances. For example, trademark registrations may cover such goods as phonograph records, video cassettes, or floppy discs, or refer to the provision of services by telephone or by facsimile. Given developments in technology, the owners of such trademark registrations may continue to provide goods or services that have the same function, content, or subject matter, but in different formats, such as downloadable music files, electronic publications, or online services.
Under historic USPTO rules, trademark registrations often could not be amended to account for such technology shifts, where the amendments would be deemed to change or go beyond the original description of goods and/or services. Consequently, some trademark owners face losing potentially valuable registration protection.
The USPTO’s pilot program is intended to help address these situations. Given the potential for harm to third parties in allowing amended identifications that go beyond the original scope, however, the pilot program is limited in nature. Its duration will be dictated by the volume of requests, and it has certain built-in protections to address third-party concerns.
A number of requirements must be met for a registration amendment to be permitted by the USPTO under this pilot program. Such requirements include:
The USPTO’s announcement of the pilot program provides some guidance on acceptable versus unacceptable amendments, a few examples of which are noted below. The USPTO will also provide a list of acceptable amendments on its website, which will be updated from time to time.
The USPTO will take several steps to take into account potential third-party harm associated with requested amendments, including conducting a search of USPTO records, publishing proposed amendments that appear acceptable prior to amending the associated registrations, allowing 30 days for interested parties to comment and explain potential third-party harm, and not extending any existing incontestable status to the amended goods and/or services or allowing a Declaration of Incontestability as to the amended goods and/or services for at least five years after the amendment is accepted.
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact any of the following Morgan Lewis lawyers: