Is Your Trademark Registration Stuck in the Past? A USPTO Pilot Program May Allow You to Modernize It

On Sept. 1, 2015, the United States Patent and Trademark Office (USPTO) rolled out a new pilot program that may help trademark registrants breathe new life into older registrations. 

Normally, once a trademark has been registered for particular goods/services, it is not possible to later amend those goods/services beyond the scope of the current identification.  But technology evolves, and goods or services may be phased out in favor of modern counterparts.  In the past, a registrant for a mark applied to outdated goods/services had to file a new application, thus giving up an earlier date of use.

Under the new pilot program, a registrant may petition the Director of the USPTO to amend the respective goods/services beyond the scope of the current identification.  But, the petitioner must show that it no longer uses the respective mark with any of the original goods/services and that the newly recited goods/services are the result of newly evolved technology in the manner or medium by which products and services are offered for sale or provided to customers.  The registrant must delete the old, original goods/services in favor of the newly evolved goods/services.

This pilot program is not available to those whose applications are still pending.  Also, it is not available to those who continue to use the subject mark with some or all of the original goods/services; registrants who use the mark on “old” and “new” goods/services must file a new application for the “new” goods/services.

The petition itself has certain specific filing requirements, including a request for amendment, fees, specimens, and dates of first use of the mark with respect to the amended goods/services.  The petition must be filed through the Trademark Electronic Application System (TEAS).  The procedural details can be found on the USPTO web site, and registrants unfamiliar with practice before the USPTO are recommended to rely on the services of an experienced trademark attorney.

In announcing this pilot program, the USPTO has suggested it is proceeding with caution to avoid causing harm to other users of a relevant mark.  Before an amendment under the program is approved, an examining attorney must perform a new search for conflicting uses.  Petitioners must agree to not file an affidavit or declaration of incontestability under §15 of the Trademark Act as to the amended goods/services for a period of five years from the amendment.  Also, once an amendment has been approved, it will be published by the USPTO and third parties who believe they may be harmed by the amendment will have a thirty day period in which to comment.

The USPTO has provided on its web site a number of example amendments that would be acceptable under this pilot program, as well as some that would not be allowed.  Key points to keep in mind are that the original goods/services are no longer in use due to the evolution of technology and that the new goods/services must pertain to the same subject matter as the original. 

As an interesting example, the USPTO points out that “streaming of audio material in the nature of music” in International Class 38 would not be an acceptable replacement for “phonograph records featuring music” in International Class 9.  The proposed use is to identify a telecommunications-provider service as opposed to identifying the source of content.  “Providing on-line music, not downloadable” in International Class 41 would be an acceptable amendment in this case.

In an era of rapid technological evolution, the USPTO’s pilot program offers trademark registrants a useful tool for preserving valuable rights.