technologyAs reported in the October 12, 2015 Blog post (see USPTO INSTITUTES PILOT PROGRAM TO ADDRESS CHANGES IN TECHNOLOGY), the USPTO launched a program to allow registrants to update registrations that contained outmoded technology in the list of goods/services to new or neutral technology. This would allow registrants to maintain registrations that would otherwise be abandoned due to the inability to demonstrate use of the goods/services in connection with the old technology.

To date, a total of 18 registrations are in the program. 4 registrations submitted at the end of April and May are pending with the remaining 14 registrations approved for amendment. In most instances, the amendment consisted of a move from old technology to new or neutral technology such as “video tapes, videocassettes” to “video recordings”; “series of phonograph records and prerecorded audiotapes” to “series of sound recordings”; and “DOS-based software” to “application software.”

Of note, there are several amendments that appear to stretch the original guidelines for the program. In the guidelines, the USPTO stated that “moving from one medium to a separate data transmission activity” is not acceptable, citing as an example, “phonograph records featuring music” to “streaming of audio material in the nature of music.” With this in mind, two accepted amendments stand out:

1) “House mark for use with type face fonts recorded on magnetic and optical media” to “House mark for use with type face fonts on electronic storage media and downloaded [sic] provided by means of electronic transmission”; and

2) “Pre-recorded educational and informational materials, namely, DVDs, DVD-Roms and CD-Roms featuring information in the fields of Eye Care and Ophthalmology” to “Downloadable electronic instructional and educational animations in the Fields of Eye Care and Ophthalmology.”

Finally, the most impressive change thus far is an amendment from ancient technology to current technology along with a change from 1 class to 2 new classes. Specifically, the original goods in Class 16 – “programs in the form of punch cards, magnetic tapes, punch tapes” – were amended to a very long list of software in Class 9 and non-downloadable software in Class 42. In part the list is lengthy because it is now required that the function/purpose of the software be defined. For the full list of goods/services in this registration, see Reg. No. 0951996.

Blog by: Mary B. Aversano
Aversano IP Law |
E: moc.walpionasrevanull@skramedarT
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