If you have trademark registrations for technologies that are now outdated, you may be eligible to participate in a new US Trademark Office program to update your registrations. Here are some examples:
– Let’s say your company makes videos, and your registrations say “videotapes featuring musical instruction“ but, since you last renewed your registration, your company has discontinued videotapes and produces only DVDs or streaming videos featuring musical instruction. Instead of filing new trademark applications for the new technology, the program allows you to file a petition to replace the old technology reference with the new one.
– Similarly, if your company has a registration for “printed publications in the field of tax,” but now all of the information is available online or in a downloadable format, you can petition to change the registrations to “provide online information in the field of tax” or “downloadable publications in the field of tax.”
– And for software—your company doesn’t provide a disk anymore—but it is available for download.
The program goes by the catchy name Pilot Program to Allow Amendments to Identifications of Goods and Services in Trademark Registrations Due to Technology Evolution. Here are some of the other benefits:
– You can change the class (say, from class 16 printed publications to class 9 downloadable publications).
– You can change from goods (software disks) to services (non-downloadable software)
– The PTO will issue a new certificate of registration.
– You keep the priority date of the original registration.
A few caveats:
– There is a cost: you have to pay $100 fee for the petition and $100 fee for an amendment to the registration. And of course, the attorney time. But this may be way less expensive than filing new applications. Here’s link to the sample declaration which the TM Office highly recommends you use: http://www.uspto.gov/trademark/trademark-updates-and-announcements/recent-postings
– The subject matter of the technology must remain the same. You can’t change from “videocassettes featuring musical instruction” to “streaming videos featuring tax advice.”
– The old technology must be discontinued. You can’t use the program to add new technologies and keep old technologies on the registration.
– There is a publication period in which interested third parties who think they may be injured by your new description/classification may object.
– There’s no watch service on the new publications to pick them up to see if they infringe your rights, so you have to check yourself.
– You can’t update applications, only registrations.
– You can’t get incontestability status for the evolved technology until five years after the amendment. – You have to submit a specimen and dates of first use for the evolved technology.
– The program is untried. Since the program inception in September, 2015, only six have proceeded without errors. Here’s where you can check for them: http://www.uspto.gov/trademark/trademark-updates-and-announcements/proposed-amendments-identifications-goods-and-services
– It may be short-lived. If the TM Office doesn’t see a significant benefit to the program during the pilot phase, they may not make it permanent.
Angela Washelesky’s practice focuses on trademark prosecution and marketing law. She advises clients, from small entrepreneurial start ups to large multi-national corporations, with regard to trademark clearance, trademark prosecution, international trademark strategy, trademark enforcement, compliance with advertising and trade practice laws, including substantiation of claims, sweepstakes and contests, privacy issues, and dispute resolution.