Outdated U.S. trademark registrations might no longer be lost.

Owners of trademark registrations in the U.S. are familiar with the frustration of technological evolutions that result in loss of protection if a trademark registration is limited to the now-defunct technology. Current U.S. practice does not allow one to expand or change descriptions of goods or services and requires trademark owners to file evidence of use at regular intervals. So, when a maintenance filing becomes due, a registration that covers “vinyl records” for instance must lapse if the music is now provided to the consumer solely as “downloadable MP3 files.” 

Good news! The U.S. Patent and Trademark Office (PTO) has begun a pilot program to allow trademark owners to swap out obsolete technology for the current means under limited circumstances. Relief is available only if use of the mark on the technology covered in the registration has ceased and been replaced by newer technology. If new technology has merely been added to the line of product offerings, a mark owner should instead file a new application to cover the new technology.

The process for requesting this extraordinary relief is through a petition to the Director. Requests that appear acceptable will be published on the PTO website for a thirty-day comment period. Comments may be submitted to: TMTechEvolutionComments@uspto.gov.

If approved, the “old” good or service is swapped for the “new” good or service. In some cases, an obsolete product (floppy discs for computers for word processing) could have evolved into a service offering (providing online non-downloadable software for word processing). A petition may be filed at any time; a mark owner need not wait until the time for filing a mandatory Declaration of Use.

Detailed information on the procedure (both applying and commenting on petitions of others), as well as examples of acceptable and unacceptable amendments, can be found on the PTO Website at:http://www.uspto.gov/trademark/trademark-updates-and-announcements/proposed-amendments-identifications-goods-and-services.