On September 1, the US Patent and Trademark Office (USPTO) launched a pilot program to allow amendments to identifications of goods or services in trademark registrations.
Amendments will be allowed where deemed necessary because the evolution of technology has changed the manner or medium by which the products or services are offered to consumers.
This change will benefit trademark owners that at one point obtained trademark registrations for “old school” technology such as cassette tapes, VHS tapes, or floppy disks.
Under US trademark law, marks must continue to be used in commerce in order for federal registration to be maintained. Trademark owners must file declarations that they are continuing to use their marks. These declarations, along with a specimen of the use, must be filed between the fifth and sixth year after trademark registration, and every 10 years after registration.
Previously, as technology evolved and trademark owners no longer used outdated media or other delivery systems, they would be forced to allow the registration to be canceled and then file a new trademark application based on the new technology. This was inconvenient and expensive and could risk the loss of long-held trademarks.
The pilot program allows amendments beyond the scope of the current registration. However, amendments will only be allowed where the trademark owner can no longer show use of the mark on the original goods or services because of evolving technology. The mark must continue to be used on goods or services based on the same content or subject.
For example, a registration for software on floppy disks (class 9) could be amended to cover cloud-based software (class 42).
Proposed amendments will be published in the USPTO’s Official Gazette and opponents will have 30 days to submit any comments.
More information about the program is available here.
This is good news for owners of trademarks in markets with rapidly evolving technology.
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Photo Attribution: “Floppy disk 2009 G1″ by George Chernilevsky – Own work. Licensed under Public Domain via Commons.