On 12 October we published the first part of “USPTO INSTITUTES PILOT PROGRAM TO ADDRESS CHANGES IN TECHNOLOGY“, reported by Mary B. Aversano. Below is the second part of this useful publication.
Important notes:
- Replacement of old goods with new evolved goods: Amendments are permitted when the trademark owner can show use in connection with the new evolved goods.
- Amendment to goods and classes may be permitted: Changes to classification of goods and changes from goods to services (or the reverse) will be considered.
- Declaration of Incontestability for original goods does not carryover to new goods: Trademark owner must not file a Declaration of Incontestability until 5 years after the accepted amendment.
- Registrations based on international registration (Madrid): Acceptability of an amendment may be affected if the underlying registration is less than 5 years old.
- Scope of foreign registration not a factor: Registrations under §44(e) exist separate from a foreign registration and are therefore not affected by the scope of a foreign registration.
- Proposed amendment published for 30 days to allow for objection: Interested parties will have 30 days to explain a potential 3rd party harm if an amendment is accepted by sending an explanation and evidence to vog.otpsunull@stnemmoCnoitulovEhceTMT.
- Publication of proposed amendments will be on a rolling basis: According to a staff attorney at the USPTO, proposed amendments will be published on the website as petitions are received with the publication cycle depending on the response to the pilot. The USPTO is beginning to receive petitions and anticipates publication of the first proposed amendments in the next coming weeks.
- Accepted amendments to be published: Once an amendment is accepted, it will be published in the Official Gazette along with the other amendments.
Examples of Acceptable Amendments
| From | To |
| Phonograph records featuring music | Musical sound recordings |
| Prerecorded video cassettes in the field of mathematics instruction | Video recordings featuring mathematics instruction |
| Floppy discs for computers for word processing | Providing on-line downloadable software for word processing |
| Downloadable software for use in database management | Software as a service (SAAS) services featuring software for use in database management |
| Printed books in the field of art history | Downloadable electronic books in the field of art history |
| Telephone banking services | On-line banking services |
| Entertainment services, namely, an ongoing comedy series provided through cable television | Entertainment services, namely, an ongoing comedy series broadcast via the Internet |
Examples of Unacceptable Amendments
| From | To | Reason |
| Downloadable software for use as a spreadsheet in the field of accounting | Providing on-line non-downloadable software for use as a spreadsheet in the field of business management | Subject matter changed from accounting to business management |
| Printed Magazines in the field of finance | Printed magazines in the field of finance; and providing on-line magazines in the field of finance | Still using goods in original form |
| Phonograph records featuring music | Streaming of audio material in the nature of music | Moving from one medium to a separate data transmission activity |
| Video game tape cassettes and video game cartridges | Video game discs and video game cartridges | Still using with video game cartridges |
Source: Aversano IP Law
