USPTO Announces Pilot Program To Allow Amendments To The Identification Of Goods And Services Due To Technology Evolution

On September 1, 2015, the USPTO began a pilot program that allows trademark holders to amend the identification of goods and services in their trademark registrations where the underlying subject matter remains unchanged, but evolving technology has changed the manner or medium in which the mark holder provides the products or services.  Thus, if the requirements of the program are met, a mark holder need not re-apply to register its mark or lose the protection of registration.  Mark holders, therefore, would do well to review their portfolios to determine whether they can and should take advantage of this program.

Amendments will be permitted under limited circumstances, and mark holders should consult the USPTO’s requirements carefully before filing a petition.  For example, this program is not available if a mark holder continues to provide the goods and services in their original form.  Therefore, an amendment from “Printed magazines in the field of finance” in International Class 16 to “Printed magazines in the field of finance” in International Class 16 and “Providing on-line magazines in the field of finance” in International Class 41 would not be permitted because the petitioner is still using the goods in their original form.  In this case, the petitioner would have to file a new trademark application to cover the online magazines.  Petitioners also agree not to file a declaration of incontestability as to the evolved goods or services for at least five years from the date of acceptance of the amendment.

For guidance, the USPTO will publish and periodically update a non-exhaustive list of acceptable amendments under this new practice.  However, a review of some of the examples already provided suggest that this program may have particular relevance to companies whose marks cover computer and electronics-related products and services (e.g., if your mark covers only “compact discs,” you might want to amend).  Similarly, mark holders whose businesses have been transformed by the online marketplace may benefit from this program.  For instance, a publishing company that now offers only electronic textbooks should be able to amend its identification of goods from “printed books in the field of art history” in International Class 16 to “downloadable electronic books in the field of art history” in International Class 9.  A music company whose mark covers “phonograph records featuring music” in International Class 9, but who no longer sells such records, may be able to amend the description to “musical sound recordings” in International Class 9.  A bank that no longer offers “telephone banking services” in International Class 36 could potentially amend the description to “on-line banking services” in International Class 36.

The program’s end date has not yet been determined, but will depend on the volume of requests.  For the USPTO’s announcement and complete list of requirements, see http://www.uspto.gov/trademark/trademark-updates-and-announcements/recent-postings.