On September 1, 2015, the U.S. Patent and Trademark Office (USPTO) launched a pilot program that allows some trademark owners the opportunity to amend their identifications of goods or services that would otherwise be beyond the scope of the current identification. The program allows owners to “catch-up” their trademark registrations with the “wheels of technology” so to speak. Did your company at one time obtain a trademark registration covering “printed newsletters” that are now offered as “downloadable online subscriptions?” Or perhaps your company had a registration for “phonograph records featuring music” that is now offered as “downloadable music files?”
In the U.S., trademarks must be used in commerce on goods and services identified in their federal registration in order for the registration protection to be maintained. Trademark owners are required to demonstrate this use by filing a declaration of use in connection with all the goods or services between the 5th and 6th anniversary of the registration, then again between the 9th and 10th anniversary of the registration, and then every ten years thereafter.
Technology evolves so quickly that by the time the 6th or 10th anniversary of the registration rolls around, the manner or the medium in which the product or service is delivered may have become obsolete and the trademark owner may no longer be able to provide a sample of use for the product or service listed in the registration, as is required to maintain the registration. Prior to the pilot program, the trademark owner was left with no viable option other than to let the registration go and re-file a fresh application, losing valuable protection.
Under this new pilot program, trademark owners will now have an opportunity to close the technology gap and amend their goods and services to cover evolving technological media.
Some examples of the type of amendments the USPTO will be accepting include the following:
Original identification
Amended identification
Phonograph records featuring music (Class 9)
Musical sound recordings (Class 9)
Printed books in the field of art history (Class 16)
Downloadable electronic books in the field of art history (Class 9)
Telephone banking services (Class 36)
On-line banking services (Class 36)
The new pilot program has some important guidelines:
- The amendment program is only available to registrations (not pending applications);
- This program is not available to trademark owners who are still providing their “old technology” along with their “new technology;” and
- The mark must still be used on goods or services that reflect the same underlying content or subject matter (i.e., this amendment program cannot be used to add entirely new goods or services).
The duration of this new pilot program will depend on the number of requests from trademark owners. Trademark owners may wish to review their trademark portfolio to see if they should take advantage of this program.
This article was written by attorney Patrick Concannon with Renee Sanft, a trademark paralegal at Nutter.
PartnerPatrick J. Concannon is a partner in Nutter's Intellectual Property and Corporate and Transactions Departments. Pat co-chairs the Trademarks and Brands practice, with over 25 years of experience devoted to helping businesses ...
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.
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