USPTO Seeks Comments on Post Registration Amendments to Identifications of Goods and Services Due to Technology Evolution | Practical Law

USPTO Seeks Comments on Post Registration Amendments to Identifications of Goods and Services Due to Technology Evolution | Practical Law

The US Patent and Trademark Office (USPTO) has requested comments on post registration amendments to identification of goods and services due to evolving technology.

USPTO Seeks Comments on Post Registration Amendments to Identifications of Goods and Services Due to Technology Evolution

by Practical Law Intellectual Property & Technology
Published on 16 Sep 2013 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) has requested comments on post registration amendments to identification of goods and services due to evolving technology.
The USPTO has requested public comments on post registration amendments to the identifications of goods and services resulting from changes in how products and services are offered for sale and provided to consumers due to evolving technology. The request for comments notes that recently the USPTO has received requests for amendment under Section 7(e) of the Trademark Act and inquiries from registration owners seeking to amend identifications of goods and services. In some cases, the requests also seek a corresponding change in classification. Samples of these requests include amending:
  • Class 9 computer software programs to providing software as a service in Class 42.
  • Class 9 items featuring music (for example, audio cassettes, audio tapes, disks, diskettes and vinyl records) to musical sound recordings in Class 9.
  • Class 16 printed magazines to providing online magazines in Class 41.
  • Class 41 entertainment services such as providing cable television entertainment programs to providing television entertainment via the internet in Class 41.
The USPTO's position has been that these amendments impermissibly expand a registration's scope in violation of Trademark Rule 2.173(e) and the public policy objective of ensuring notice of the coverage afforded under registration. However, the request notes that trademark owners typically argue that the USPTO should accept these amendments on the basis that:
  • The core good/services remain the same.
  • Merely changing the medium for the goods/services does not alter or expand the scope of protection under a registration.
Therefore, the USPTO is now seeking feedback from trademark owners, practitioners and other interested parties about the proposed amendments and USPTO policy including responses to the following questions:
  • Should the USPTO allow these amendments?
  • If it does allow these amendments, should they only be allowed post registration to account for changes in technology following registration, or should similar amendments be permitted in applications before registration?
  • What type of showing should be required for these amendments? Should a special process be required to file these amendments, apart from a request for amendment under Section 7?
  • Should these amendments be limited to certain goods, services or fields (such as computer software and music), and if so, how should the determination be made as to which goods, services or fields?
  • Should a distinction be made between products that have been phased out (such as eight-track tapes), as opposed to products for which the technology is evolving (such as online magazines), or should amendments be permitted for both categories of products?
  • Does the scope of protection in an identification of goods/services expand if an amendment is allowed to alter the medium of the goods/services?
  • Would the original dates of use remain accurate if these amendments are permitted?
The USPTO is accepting comments through December 1, 2013 by e-mail to [email protected] with the subject line "Technology Evolution." The full request for comments is available here.