Businesses must constantly adapt to technological advancements in order to remain competitive in a fast-paced digital economy. Consider, for example, the music or computer industry—a company founded in 1980 will be offering very different products and services today than it did at its inception. But as businesses evolve over time, they sometimes find that their trademark registrations have become outdated—specifically, the goods and services identified on the registrations may no longer be applicable to their current business model. This can carry serious consequences: if a registrant can no longer show trademark use in connection with the identified goods and services, the registration will become vulnerable to cancellation.
Earlier this month, the United States Patent and Trademark Office (USPTO) commenced a pilot program to address this problem. Specifically, the USPTO will now consider amendments to identifications of goods and services in cases where technological advancements have made the original identification obsolete. As the USPTO’s announcement of the program explains, “[a]mendments will be permitted where they are deemed necessary because evolving technology has changed the manner or medium by which the underlying content or subject matter … are offered for sale.” The pilot program is the culmination of more than a year of consideration by the USPTO, a process that included a roundtable discussion with practitioners and a request for public comments.
While this opportunity will be valuable to many registrants, the USPTO has made clear that the pilot program will not be open season for any and all registrants to amend their goods and services. Rather, the USPTO has carefully circumscribed the circumstances in which amendments will be accepted. For example, amendments will only be permitted if, due to technological changes, the registrant is no longer able to show any use of the mark with the listed goods or services. In addition, the pilot program only applies to amendments that would not be permitted under current practice because they would be outside the scope of the existing goods and services.
In its announcement, the USPTO provided several examples of amendments that would meet these requirements, including the following:
- “Phonograph records featuring music” in International Class 9 to “Musical sound recordings” 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
In developing the pilot program, the USPTO was cognizant of, and sought to limit, the harm that amendments might cause to third parties, including other mark owners and the general public. As a result, the USPTO will only allow amendments where the technology at issue has evolved in such a way that the amendment would not create a public notice concern. That is, while the pilot program is intended to account for technological changes in an industry, the underlying subject matter of the goods and services must remain consistent. Registrants may not use the pilot program to add goods and services that are entirely new. In addition, the USPTO will publish each proposed amendment and allow interested parties to submit comments on whether the amendment should be approved. Finally, note that registrants will not be permitted to seek “incontestable” status for any newly added goods and services for a period of five years.