Laptop, mobile phone and digital tablet pc. 3dTrademark Office rules generally prohibit the broadening of goods and services identified in existing trademark registrations. But on September 1, the USPTO announced a new pilot program that will create a limited exception to this rule. Beginning September 1, trademark owners may now petition to broaden their registrations’ identified goods and services where such changes are the result of transitioning from “old” to “new” technology. The Technology Evolution Pilot Program could affect brand owners whose offerings are now provided in a different form or medium than when their trademark registrations first issued.

In the United States, trademark owners must routinely submit declarations of continuing use as to the goods and services identified in their trademark registrations. In cases where none of the goods and services is offered exactly as described in the registration, the trademark owner has historically been forced to abandon the registration, with the possibility of filing a new application to cover any updated or replacement goods and services. Now, in cases where the change in goods and services is simply the result of changing technology, the pilot program offers the possibility of maintaining the existing registration. This will allow trademark owners to extend the protections afforded by their existing registrations while possibly enjoying meaningful cost savings. 

The USPTO provides several examples of acceptable amendments:

  • “Prerecorded video cassettes in the field of mathematics instruction” to “Video recordings featuring mathematics instruction”
  • “Floppy discs for computers for word processing” to “Providing on-line non-downloadable software for word processing”
  • “Printed books in the field of art history” to “Downloadable electronic books in the field of art history”
  • “Telephone banking services” to “On-line banking services”

This list is non-exhaustive, since the technological changes affecting brand owners are many.

Key provisions in the program:

  • The program is available only where the registrant is no longer able to show use of the mark with any of the goods and services in its original registration, and where the registrant can attest that modification is necessary as a result of evolving technology.
  • According to the USPTO, the original dates of use would remain in effect in the registration, although the “evolved dates” will be made of record in the USPTO’s publicly available database. It remains to be seen whether and how modification will affect priority disputes, although the USPTO’s guidance is reassuring.
  • Any “incontestable” status afforded to the original registration will not apply to the newly amended goods or services. The trademark owner may file a declaration of incontestability five years following modification to the “evolved” goods and services.
  • The USPTO will consider third-party harm that may result from allowing modification of the registration. Proposed amendments will be published by the USPTO, and interested parties will have 30 days from publication to comment on proposed modifications. Brand owners may wish to expand their trademark watch services to monitor proposed amendments affecting marks similar to their own.

Even though the USPTO’s Technology Evolution program is only in its infancy, it may be a significant change for trademark owners, and one that should be seriously considered as companies transition to new media and new technologies.