trademarkThere have been protests in the trademark community that trademark owners must unnecessarily relinquish registrations or parts of registrations if the manner or medium of the goods/services (collectively “goods”) changed because of technology. An example is a mark originally registered for use in connection with 8-track tapes. Because of changes to technology, the mark owner is now stuck with an outmoded registration for goods no longer offered in the marketplace. Requesting an update to the evolved technology, e.g., DVDs, is considered to be an unacceptable addition or outside the “scope” of the registration (U.S. law only accepts narrowing of the goods in a registration).

Under the pilot program, trademark owners will be allowed to petition the director for a waiver of the “scope” rule for the specific purpose of updating the goods because of changes in technology.

Amendments permitted under current trademark practice are not affected by this program. (See

Since the program is in its infancy, no actual data is yet available. Updates will be provided when the first set of proposed amendments are published on the USPTO website in the next coming weeks. Therefore to be continued …

Pilot Program Details

Starting September 1, 2015, a trademark owner is allowed to petition to change the goods and/or classes in a registration if the change is due to evolving technology.

Reported by: Mary B. Aversano
Aversano IP Law
Email: moc.walpionasrevanull@skramedarT

    • January 2019
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    The new EU trade mark Regulation enters into force on March 23rd. As a result, the Office for Harmonization in the Internal Market (OHIM) will change its name to the European Intellectual Property Office (EUIPO).

    The amending Regulation also revises the fees payable to the Office, including an overall reduction in their amounts, particularly in the case of trade mark renewal fees. On 23.3. 2016, the Office’s online application forms and fee calculator will be automatically updated to reflect the new system.
    From its base in Alicante, Spain, OHIM has processed more than 1.3 million Community trade mark applications in 23 EU languages, from nearly every country and region in the world, since 1996.

    The Amending Regulation was published on 24 December 2015 and is part of the EU trade mark reform legislative package that also includes the replacement of the existing EU Trade Mark Directive (Directive 2008/95/EC of the European Parliament and the Council).

    OHIM is the EU’s largest decentralised agency. It is entirely self-financed, receiving no funding from the EU Budget. As well as managing the Community trade mark and the registered Community design (RCD), it works in collaboration with the EU national and regional IP offices to build a stronger IP system across the EU for the benefit of users.

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