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September 18th, 2015
Trademark Office Now Permits Amendment of Registrations to Reflect Technological Advances
Here is some big news for trademark owners: Earlier this month, the United States Patent and Trademark Office ("USPTO") began a pilot program to allow owners of registered trademarks to update their registrations to reflect changes to their products made as a result of technological advances. For example, the program would permit a record company that no longer sells vinyl to update its registration to replace "phonograph records featuring music" with "musical sound recordings." Similarly, a software developer whose products no longer come on floppy discs may be allowed to update its registration to reflect that its products are now provided in an "on-line non-downloadable" format.
The idea is that if changes like this are not allowed, many trademark owners may lose the benefit of their registrations. That is because a trademark registration will be cancelled if its owner does not submit evidence to the USPTO that the mark is in use for the goods and/or services listed in its registration. The USPTO requires owners to submit evidence of use by the sixth anniversary of registration, and then once every ten years after the registration date. Absent extraordinary circumstances, a trademark owner who cannot show use will lose its registration.
Who can take advantage?
The pilot program applies only to registered marks, not to pending applications, and applies only in situations where the registrant no longer is able to show use of their trademark for the goods or services covered by the registration. In other words, if the record company mentioned above still sells records, in addition to music in electronic format, it would not be allowed to amend its registration. Further, if the amended registration had "incontestable" status under Section 15 of the Trademark Act, 15 U.S.C. §1065, that status will not apply to the amended goods or services. Those goods or services will not be eligible for "incontestability" until five years after the date the amendment is entered.
When can I apply?
The pilot program began on September 1st, and the USPTO has not yet decided when it will end. The program's duration will depend on the number of petitions filed, and when it ends, the USPTO will assess whether to permit similar amendments on a permanent basis.
What to do.
If you are in an industry that has changed significantly due to technological advances, this is an excellent time to review your existing trademark portfolio to see if the goods and services listed in your registrations need an update to reflect current technology. There is no guarantee that you will be able to make these types of changes to your registrations after the pilot program ends. Acting now may allow you to preserve longstanding registrations that you might otherwise be unable to maintain.
If you have any questions about the USPTO's pilot program or other trademark issues, please contact Catherine Farrelly at 212.826.5579 or email@example.com, or any other member of the Frankfurt Kurnit Trademark and Brand Management Group.
Other Intellectual Property Law Alerts
Deadline: Are Your Copyright Office DMCA Agent Registrations Up to Date?
December 31, 2017 is the deadline for certain online service providers to update their Digital Millennium Copyright Act ("DMCA") agent registrations on the US Copyright Office's new online registration system.
December 18 2017
Beware of Trademark Solicitation Scams
Trademark solicitation scams are on the rise. If you receive correspondence about your trademarks from someone other than your trademark attorneys — correspondence that looks like an invoice or an offer for trademark services — it may not be legitimate. Here's a summary of what the scams look like and what you should do about them.
September 5 2017
Boston Restaurant Could Not Enforce Geographically Descriptive Trademark Against Celebrity Chef
In a closely watched trademark battle with implications for food, beverage and other industries, a federal court has found for celebrity chef and television personality Christopher Kimball and his new media company, CHRISTOPHER KIMBALL'S MILK STREET. An allegedly competing business, MILK STREET CAFÉ, had sued CHRISTOPHER KIMBALL'S MILK STREET, arguing that Kimball's use of CHRISTOPHER KIMBALL'S MILK STREET was likely to cause confusion with MILK STREET CAFÉ.
August 30 2017