Washington, D.C. — The U.S. Patent and Trademark Office (“USPTO”) is seeking public comment on amendments to trademark registrations with respect to identification of goods and services which may be necessary due to changes in technology. The USPTO cited changes in the manner or medium by which products or services are offered for sale and provided to customers as a result of evolving technology. Comments are due no later than Nov. 1, 2013, and should be emailed to TMFeedback@uspto.gov, with the subject line “Technology Evolution.”
Under §7(e) of the Trademark Act, a registration based on an application under §1 or §44 of the Trademark Act may be amended for good cause upon application of the owner and payment of the prescribed fee, provided the amendment does not materially alter the character of the mark. 15 U.S.C. §1058(e). With respect to the identification of goods/services, an identification may be amended to restrict the identification or change it in ways that would not require republication of the mark. See 37 C.F.R. §2.173(e). However, no goods/services may be added to a registration by amendment. Moreover, under current USPTO practice, changed circumstances, such as new technology, will not render acceptable an amendment that is not otherwise permissible. TMEP §1609.03.
Recently, the USPTO has received a number of requests for amendment under §7, as well as inquiries from registration owners, seeking to amend identifications of goods/services due to 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.
Examples of these requests include amending:
- Class 9 computer software programs to providing software as a service in Class 42;
- Class 9 items featuring music (e.g., audio cassettes, audio tapes, disks, diskettes, vinyl records, etc.) to musical sound recordings in Class 9;
- Class 16 printed magazines to providing on-line magazines in Class 41; and
- Class 41 entertainment services such as providing cable television entertainment programs to providing television entertainment via the Internet in Class 41.
In 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.
The USPTO previously has taken the position that such amendments impermissibly expand the scope of a registration, in contravention of Trademark Rule 2.173(e). In accordance with §7(e), the identification of goods/services in a registration determines the scope of all permissible amendments (and the identification may not be broadened in a way that would require republication), due to the public policy objective of ensuring notice of the coverage afforded under a registration.
However, registration owners seeking to amend their identifications in this matter have countered that public notice would not be adversely impacted because the core goods/services remain the same. They further assert that merely changing the medium for the goods/services would not alter or expand the scope of protection granted under a registration.
In response to these requests, the USPTO is seeking feedback from U.S. trademark owners, practitioners, and other interested parties regarding their views about these proposed amendments and USPTO policy on this subject.
The USPTO asks that responses to the following questions, or any additional comments, be sent to TMFeedback@uspto.gov, with the subject line “Technology Evolution.” To ensure that your feedback may be considered, please submit it no later than December 1, 2013.
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.
Practice Tip: A registration based on an application under §66(a) of the Trademark Act (a registered extension of protection of an international registration to the United States) remains part of and dependent on the international registration. 15 U.S.C. §1141j; 37 C.F.R. §7.30. All requests to record changes to an international registration must be filed with the International Bureau of the World Intellectual Property Organization. TMEP §1609.01(a). Accordingly, the identification of goods/services in a registered extension of protection can only be amended in limited circumstances that affect only the extension of protection to the United States. TMEP §§1609.01(a), 1609.03. Specifically, the holder of a registered extension of protection may file a request with the USPTO to amend the registered extension of protection to limit or partially surrender goods/services. Id.