USPTO INSTITUTES PILOT PROGRAM TO ADDRESS CHANGES IN TECHNOLOGY – Part I

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 www.uspto.gov/sites/default/files/documents/Technology_Evolution_Pilot_Program.docx).

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