Ch-Ch-Ch-Ch-Changes: USPTO Pilot Program on Changing Technology

As you may have heard, the USPTO has commenced a pilot program to allow, under limited circumstances, amendments to identifications of goods/services in trademark registrations to account for evolving technology. Amendments that would normally be beyond the scope of the current identification may be permitted upon petition to the Director. The pilot program was implemented because evolving technology has sometimes changed the manner or medium by which the underlying content or subject matter of products and services are offered for sale or provided to customers – such as in the music and software fields.

Following are the top four considerations to bear in mind when deciding whether to file such a petition under the pilot program.

1. This is a pilot program and such amendments may not be permitted on a permanent basis. If you believe your registration qualifies for an amendment, petition as soon as possible. The USPTO has not announced an end date for the pilot program.
2. When petitioning for an amendment, existing goods/services for which the registrant is no longer able to show use must be replaced with the goods/services in their evolved form.
3. Amendments will only be permitted when the registrant is no longer able to show use of the mark with the goods/services in their original form due to evolving technology. If the registrant is continuing to use the mark with the goods/services in their original form along with in the evolved form, a new trademark application may be filed in order to seek registration for the evolved goods/services.
4. Amendments that change the classification of the goods/services and change the identification from goods to services (or vice versa) may be considered.

A link to the USPTO announcement of the pilot program can be viewed here.

This article appeared in the September 2015 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.