USPTO Considers Effect of Technology Evolution on Trade Marks

As technology changes, should
trade mark owners be able to
amend trade mark registrations?

Many trade mark registrants have discovered that their older trade mark registrations have become disconnected from their current product offerings due to changes in technology.  Trade marks related to software and music are among the most frequently affected.  For example, a record label might have filed a trade mark application for “items featuring music (e.g. audio cassettes, audio tapes, disks, diskettes, vinyl records),” but the record label now distributes its music through Internet downloads.  The record label may wish to amend its trade mark registration to “musical sound recordings,” so that its trade mark registration is not tied to a specific method of distribution that is likely to become outdated as technology develops. 

Should this trade mark owner be permitted to make such an amendment to its trade mark registration or should it be required to file a new application, which would open a new period of review and, potentially, opposition?

The USPTO has apparently received a number of similar requests for amendment (pursuant to Section 7 of the Lanham Act) due to changes that the USPTO describes as "changes in the manner or medium by which products and services are offered for sale and provided to consumers, particularly because of evolving technology.”  In some cases, these requests have also sought a corresponding change in classification (e.g., moving a registration in Class 16 for “printed magazines” to Class 41 for “on-line magazines, or moving a Class 9 “computer software programs” registration to Class 42 as “providing software as a service”). 

According to the USPTO,

"[i]n such cases, trademark owners typically assert that the amendment should be accepted because the content or subject matter of the respective product or service is unchanged. For example, in the case of amendments involving musical sound recordings, trademark owners explain that the music is the same, but it is simply no longer provided on audio cassettes, and now instead is provided on CDs or via downloadable audio files. They assert that merely changing the medium in which the identical music is being provided is not an expansion of the scope of the registration."

In the past, the USPTO has determined that such amendments impermissibly expand the scope of a registration.  However, trade mark owners seeking to amend their registrations contend that merely changing the medium for the goods/services should not be viewed as an impermissible alteration or expansion of the scope of protection granted under a registration. 

Merpel eagerly prepares comments
for submission to the USPTO

As a result of these frequent requests, the USPTO is seeking public comment from “U.S. trademark owners, practitioners, and other interested parties regarding their views about these proposed amendments and USPTO policy on this subject.”  [The IP Kat notes that foreign trade mark practitioners are welcome to submit their comments on this matter.  However, any USPTO change to its policy on amendments to trade mark registrations will apply only in limited circumstances to trade mark registrations that are extensions of foreign trade mark registrations.]  

Readers may send their comments to the USPTO at TMFeedback@uspto.gov, with the subject line “Technology Evolution.”  Comments must be received no later than December 31, 2013 to be considered. [In addition to sharing input with the USPTO, readers are encouraged to share comments with the IP Kat using the comments section to this post.]  [Merpel sniffs in concern, hoping that the current US government shut down will not delay the completion and review of public comment requests such as this.  Fellow GuestKat Bertrand provides more information on this topic here.]

Specifically, the USPTO seeks answers to the following questions: 

1. Please identify your relevant background on this issue, including whether you are a trademark owner or practitioner, and the general size and nature of your business or trademark practice, including the number of trademark applications and registrations your business has, or your practice handles.
2. Do you think the USPTO should allow amendments to identifications of goods/services in registrations based on changes in the manner or medium by which products and services are offered for sale and provided to consumers?
3. If such amendments are permitted, should they only be allowed post registration to account for changes in technology following registration, or should similar amendments be permitted in applications prior to registration (see 37 C.F.R. §2.71(a), stating that prior to registration, an applicant may clarify or limit, but not broaden, the identification)?
4. What type of showing should be required for such amendments? Should a special process be required to file such amendments, apart from a request for amendment under §7?
5. Should such amendments be limited to certain goods, services or fields (such as computer software, music, etc.), and if so, how should the determination be made as to which goods, services or fields?
6. 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 on-line magazines), or should amendments be permitted for both categories of products?
7. Do you believe the scope of protection in an identification of goods/services is expanded if an amendment is allowed to alter the medium of the goods/services?
8. Would the original dates of use remain accurate if such amendments are permitted?
9. What would the impact of such amendments be on the public policy objective of ensuring notice of the coverage afforded under a registration?
10. Please provide any additional comments you may have.

This Kat is delighted to see that the USPTO is taking seriously the effect of technology evolution on trade mark registrations.  Given the quick and constant innovation in industries that are reliant on technology, trade mark owners in those industries will surely benefit from any changes to USPTO policy on this matter. 

A link to the USPTO’s press release document can be found here: Request for Comments: Post Registration Amendments to Identifications of Goods and Services Due to Technology Evolution