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When Technology Evolves

Amending Your Trademark Registration’s Goods/Services

Extracted from https://www.uspto.gov/trademarks-maintaining-trademark-registration/amending-your-registration-s-goodsservices-when


The United States Patent and Trademark Office (USPTO) recognizes that technology is always changing. Trademark owners sometimes adjust the way they do business to stay competitive in rapidly evolving fields. They may offer their goods/services in an updated format when those listed on their registration are outdated or obsolete. [The USPTO has a] pilot program offers these trademark owners, under limited circumstances, an opportunity to amend their registrations.


What is the technology evolution pilot program?

[The USPTO has] initiated a pilot program that allows certain trademark owners to amend the goods/services identified in their trademark registrations. You may be able to participate if you provide the same fundamental goods/services through an updated means, method, or format. For example, if your registration identifies your goods as “printed children’s books,” you may be eligible to amend the goods to “downloadable electronic children’s books” if you no longer provide the books in a printed format. [The USPTO calls] the goods/services in their new form the “evolved” goods/services. For more examples, see below.


How long will the pilot last?

The pilot does not currently have a termination date. The results of the pilot will help [the USPTO] determine if [they] will continue to allow such amendments in the future. Registration amendments are permanent, regardless of the outcome of the pilot program.


[Who is] eligible to participate in the pilot?

You are eligible to participate if you meet all of the following requirements:

  • You own a registered trademark
  • You provide goods/services in their evolved form with the same underlying content or subject matter as the original goods/services
  • You no longer provide the original form of your goods/services
  • You no longer provide any goods/services identified in your registration that contain the same underlying content
  • See below for examples of acceptable amendments.


You are not eligible to participate if:

  • You still use the mark on the original goods/services or on other goods/services identified in the registration containing the same underlying content.

For example, if your registration identifies your goods as “phonograph records and audio tapes featuring music,” you would not be eligible to amend the goods to “phonograph records and compact discs featuring music.” This is because you still provide phonograph records, which have the same underlying content as your evolved goods.  Instead, you would need to delete the goods/services that are no longer in use from the registration and file a new application to seek registration of your mark for the evolved goods/services.

  • If the identification of goods/services in your registration is broad enough to include your evolved goods/services.
  • For example, if your registration identifies your goods as “newsletters in the field of accounting” (International Class 16), it can be amended to “providing on-line newsletters in the field of accounting” (International Class 41) without a request under the pilot program. Instead, you can file a Section 7 request to narrow the scope of your goods/services. Preview the section 7 form here.  See TMEP §1402.07(c) for more information.


How will the USPTO process my request?

  • [The USPTO] will review your request within two months to determine if it is eligible and complies with all pilot requirements. If your request is not eligible for the pilot, it will be dismissed.  If your request is incomplete, [The USPTO] will send you a letter to notify you of the missing requirements. You must respond to the letter within 30 days or your request will be denied. When your request is complete, [The USPTO] will publish your proposed amendment for public comment on [their] website.
  • [The USPTO] will review all public feedback submitted within 30 days of publication. [The USPTO] will also search [The USPTO] database of registered and pending marks to determine if any marks conflict with your amendment. Both of these steps help us assess the risk of third-party harm. If either the search or public comments uncover potential third-party harm, it may be a basis for not granting the petition.
  • If [The USPTO allows] your amendment, it will be published in the Trademark Official Gazette. You will receive an updated registration certificate that includes your amended goods/services and any other goods/services in the registration not covered by your request.


What should I do if I have an upcoming required maintenance filing deadline?

If you submit a request under the pilot program and have an upcoming maintenance filing deadline, [The USPTO] recommend that you do the following:

  1. File your maintenance filing for the evolved goods/services since the original goods/services are no longer in use.
  2. Use the miscellaneous section of the form to explain that you have filed a request under the technology evolution pilot program and request that the Post Registration Division defer review of your maintenance filing until a decision has been reached on the request under the pilot.

If you fail to submit a required maintenance filing under Sections 8, 9 or 71 of the Trademark Act, your registration will be canceled or expire.


Are there additional considerations?

Madrid-based registrations

Because Madrid-based registrations are based on the underlying international registrations, there are additional considerations.  The scope of your amended goods/services must not be beyond the scope of the original goods/services listed in your international registration. Additionally, you may not change the classification of your goods/services.


Incontestable status

If your mark has incontestable status, it will not be transferred to your amended goods/services. You may not file or refile for incontestability for five years following the approval date of your amendment.


How do I submit my technology evolution pilot program request?

1. Open the “Petition to the Director under Trademark Rule 2.146” form in the Trademark Electronic Application System (TEAS) to submit a combined Petition to the Director and Request for Amendment Under Section 7. You can find a link to this form on the petition forms page. You must submit your request through TEAS to participate in the pilot program.

2. Enter the title “Petition to Allow Amendment Due to Technology Evolution” at the top of the free-text portion of the form.

3. Enter your petition information within the free-text portion of the form. View a sample of the text.


  • Request a waiver of the “scope” rule, (Trademark Rule 2.173(e)*, 37 C.F.R. §2.173(e)) which states that no amendment to the identification of goods/services in a registration will be permitted except to restrict the identification or change it in ways that would not require republication.
  • Provide a declaration of facts that addresses the following:
  • Based on changes due to evolving technology in the manner or medium by which products and services are offered for sale and provided to consumers, you cannot show use on the original goods/services;
  • You currently use the mark on other goods/services reflecting the evolved technology, and the underlying content or subject matter remains unchanged; and
  • Absent an amendment of the identification, you would be forced to delete the original goods/services from the registration, and thus lose protection in the registration in relation to the underlying content or subject matter of the original goods/services.
  • You agree not to file or refile an affidavit or declaration of incontestability under §15 of the Trademark Act, 15 U.S.C. §1065, as to the evolved goods/services for at least five years from the date of acceptance of the amendment.

          

4. Provide dates of use anywhere and in commerce for the goods/services in their evolved form.  Although the original dates of use would remain in effect in the registration, the “evolved” dates would become part of the public record.

5. Enter your current and proposed identifications within the free-text portion of the form. View a sample of the text. Use the Trademark ID Manual to help you choose the best description for your evolved goods/services.  All proposed identifications must comply with current requirements regarding specificity and classification.   

6. Attach a specimen that shows current use of your mark in commerce on or in connection with your amended goods/services.

7. Provide an affidavit or signed declaration under Trademark Rule 2.20, 37 C.F.R. §2.20, to verify the information provided in your request.

8. Pay both the “petition fee” and the Section 7 “filing amendment to registration fee.”



Examples of acceptable and unacceptable amendments under the pilot

Acceptable amendments

Original: “Phonograph records featuring music” (International Class 9)

Amended: “Musical sound recordings” (International Class 9)

 

Original: “Prerecorded video cassettes in the field of mathematics instruction” (International Class 9)

Amended: “Video recordings featuring mathematics instruction” (International Class 9)

 

Original: “Floppy discs for computers for word processing” (International Class 9)

Amended: “Providing on-line non-downloadable software for word processing” (International Class 42)

 

Original: “Downloadable software for use in database management” (International Class 9)

Amended: “Software as a service (SAAS) services featuring software for use in database management” (International Class 42)

 

Original: “Printed books in the field of art history” (International Class 16)

Amended: “Downloadable electronic books in the field of art history” (International Class 9)

 

Original: “Telephone banking services” (International Class 36)

Amended: “On-line banking services” (International Class 36)

 

Original: “Entertainment services, namely, an ongoing comedy series provided through cable television” (International Class 41)

Amended: “Entertainment services, namely, an ongoing comedy series broadcast via the Internet” (International Class 41)


Unacceptable amendments

Original: “Downloadable software for use as a spreadsheet in the field of accounting” (International Class 9)

Amended: “Providing on-line non-downloadable software for use as a spreadsheet in the field of business management” (International Class 42)

Why it’s unacceptable: The subject matter of the spreadsheet software has changed from accounting to business management.

 

Original: “Printed magazines in the field of finance” (International Class 16)

Amended: “Printed magazines in the field of finance” (International Class 16) and “Providing on-line magazines in the field of finance” (International Class 41)

Why it’s unacceptable: The petitioner is still using the goods in their current form. The petitioner may file a new trademark application for the services in International Class 41.

 

Original: “Phonograph records featuring music” (International Class 9)

Amended: “Streaming of audio material in the nature of music” (International Class 38)

Why it’s unacceptable: The underlying goods/services have changed. The petitioner originally provided musical recordings, but now provides a service that transmits music.  An amendment would be permitted from “phonograph records featuring music” in International Class 9 to “providing on-line music, not downloadable” in International Class 41, which is a service of providing content in a new manner, i.e., “on-line.”

 

Original: “Video game tape cassettes and video game cartridges” (International Class 9)

Amended: “Video game discs and video game cartridges” (International Class 9)

Why it's unacceptable: Although the petitioner is no longer using the mark on "video game tape cassettes," the petitioner is still using the mark on "video game cartridges." Without the amendment, the petitioner would not lose protection in relation to the underlying content of the original goods. The petitioner may file a new trademark application for "video game discs" in International Class 9.


[Third-Party Harm Considerations


The USPTO will perform a new search of Office records in considering possible third-party harm in allowing the amendment.


Any “incontestable” status under §15 of the Trademark Act, 15 U.S.C. §1065, that applied to the original goods/services will not apply to the newly amended goods/services in their evolved form.  Moreover, in order to reduce the possibility of third-party harm in relation to registrations, the petitioner must declare that it will not file (or refile, if applicable) an affidavit or declaration of incontestability under §15 as to the evolved goods/services for a period of at least five years from the date of acceptance of the amendment.  


As an additional means of reducing the possibility of third-party harm and to provide a mechanism for interested parties to comment about proposed amendments prior to acceptance, the USPTO will publish on a webpage, to be accessed from the Trademark Official Gazette and Trademark Official Gazette Notices webpages of the uspto.gov website, all proposed amendments that appear likely to be acceptable prior to granting the petition and amending the registration.  Interested parties will have 30 days from publication to comment on proposed amendments and such comments will factor into assessing the third-party harm aspect of the petition.] [Extracted from http://www.uspto.gov/sites/default/files/documents/Technology_Evolution_Pilot_Program.docx]



* Trademark Rule 2.173(e)*, 37 C.F.R. §2.173(e)    Amendment of registration

(a) Form of amendment. The owner of a registration may apply to amend a registration or to disclaim part of the mark in the registration. The owner must submit a written request specifying the amendment or disclaimer. If the registration is involved in an inter partes proceeding before the Trademark Trial and Appeal Board, the request must be filed by appropriate motion to the Board.

(b) Requirements for request. A request for amendment or disclaimer must:

(1) Include the fee required by § 2.6;

(2) Be verified and signed in accordance with § 2.193(e)(6); and

(3) If the amendment involves a change in the mark: one new specimen per class showing the mark as used on or in connection with the goods, services, or collective membership organization; a verified statement that the specimen was in use in commerce at least as early as the filing date of the amendment; and a new drawing of the amended mark. When requested by the Office, additional specimens must be provided.

(4) The Office may require the owner to furnish such specimens, information, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the amendment.

(c) Registration must still contain registrable matter. The registration as amended must still contain registrable matter, and the mark as amended must be registrable as a whole.

(d) Amendment may not materially alter the mark. An amendment or disclaimer that materially alters the character of the mark will not be permitted, in accordance with section 7(e) of the Act.

(e) Amendment of identification of goods, services, or collective membership organization. No amendment in the identification of goods or services, or description of the nature of the collective membership organization, in a registration will be permitted except to restrict the identification or to change it in ways that would not require republication of the mark.

(f) Amendment of certification statement for certification marks. An amendment of the certification statement specified in § 2.45(a)(4)(i)(A) or (a)(4)(ii)(A) that would materially alter the certification statement will not be permitted, in accordance with section 7(e) of the Act.

(g) Conforming amendments may be required. If the registration includes a disclaimer, description of the mark, or other miscellaneous statement, any request to amend the registration must include a request to make any necessary conforming amendments to the disclaimer, description, or other statement.

(h) Elimination of disclaimer. No amendment seeking the elimination of a disclaimer will be permitted, unless deletion of the disclaimed portion of the mark is also sought.

(i) No amendment to add or delete section 2(f) claim of acquired distinctiveness. An amendment seeking the addition or deletion of a claim of acquired distinctiveness will not be permitted.


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Do you still have old technology, not in use, on your trademark registration? Email us at WP@NJP.legal with your registration number for a quote on evolving your trademark registration by getting a SCOPE WAIVER.