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ON-DEMAND INSIGHTS

Amending a Trademark Registration when Technology Evolves

By Michelle Rosenberg, Wade Savoy, June 24, 2021

USPTO trademark amendments

For many companies, innovations in technology can have a dramatic impact on their business model, including on the products or services they offer to customers. Despite its many advantages, innovations can also have unforeseen consequences for trademark portfolios. A software company that once sold its application on disks may now offer it exclusively as a SaaS (software as a service), which may lead to problems when its trademark maintenance filings are due. Since the United States Patent and Trademark Office (USPTO) does not consider software distributed on disks and a SaaS to be the same thing, the company’s registrations covering disks may need to be abandoned and new applications covering a SaaS may need to be filed.

This problem of evolving technology is not limited to high tech companies; it can impact any business which leverages technological advancements to improve its core product/service offerings. For instance, in the publishing industry, the move from print to online publications has been a very natural evolution in the business model of most publishing companies. However, if the USPTO deems online publications to be outside the scope of existing trademark registrations covering print materials, the need to file new registrations can not only lead to gaps in a company’s trademark protection, but also result in additional filing fees in order to remedy.  

Fortunately, the USPTO has a solution designed to help companies in this situation:  the Technology Evolution Pilot Program (“pilot program”), which offers trademark owners an opportunity, in limited circumstances, to amend the goods/services listed in their current trademark registration when the manner or medium for offering or providing such goods/services to customers has changed due to evolving technology. By allowing an amendment, the program enables owners to preserve their original registration, as opposed to requiring them to refile under a new classification.

Who Qualifies for the Pilot Program?
Eligibility depends on a number of factors. Most importantly, however, the trademark owner must provide its goods/services in their evolved form with the same underlying content or subject matter as the original goods/services, and the original form must no longer be offered.

The USPTO offers some examples:

  • If a trademark registration identifies goods as “printed children’s books,” the owner may be eligible to amend the classification of goods to “downloadable electronic children’s books” if printed books are no longer being offered;
  • If a trademark registration identifies “downloadable software for use in database management,” the owner may be able to amend to “software as a service (SAAS) services featuring software for use in database management” if the downloadable software is no longer being distributed; and
  • If a trademark registration identifies “telephone banking services,” the owner might be able to amend to “on-line banking services,” again if the telephone services are no longer offered.

Additional examples on the USPTO website  illustrate what is and is not permitted under the pilot program.

If your company owns a trademark registration and the goods/services no longer apply because technology has evolved, you may be eligible to participate in the USPTO’s pilot program and amend the goods/services. Petitions can be filed ahead of your next scheduled maintenance filing for the trademark registration. We encourage you to reach out to Michelle Rosenberg at mrosenberg@patentgc.com or Wade Savoy at wsavoy@patentgc.com to discuss your specific needs.