By Kyle Migliorini
New technological innovations gain a great deal of attention when it comes to intellectual property rights (e.g., generative-AI, NFTs, metaverse, blockchain, etc.) and how they allow entities to transform their products and services (e.g., streaming, cloud-based software, websites, etc.). However, innovations like these raise the question of what happens to registrations that registered prior to an entity incorporating them into their business. For instance, what happens when you have a registration for Class 9 downloadable software, but your business has changed so that you no longer offer downloadable software, but instead you now offer Class 42 non-downloadable software through a web browser?
In the U.S., there still exists a procedure called a Petition for Technological Evolution to amend registered goods and services to reflect these types of changes. It only requires a registrant:
- Own a registration that contains content or features subject matter language like “featuring” or “in the field of”;
- Provide fundamentally the same goods or services in a new form, and the underlying content or subject matter has not changed;
- Not provide the prior iteration of the registered goods or services anymore; and
- Provides a proposed amendment that otherwise complies with Trademark Office standards.
For example, the Trademark Office website identified acceptable amendments to include changing downloadable software to non-downloadable software, broadcasting entertainment services through cable television to broadcasting via the internet, and providing printed books to providing downloadable electronic books (see: https://www.uspto.gov/trademarks/maintain/amending-your-registration-s-goodsservices-when).
In addition, the petition must include a declaration stating the following:
- Based on changes due to evolving technology in the manner or medium by which products and services are offered for sale and provided to consumers, registrant cannot show use on the original goods or services;
- Registrant currently uses the trademark on goods or services in a manner or medium reflecting the evolved technology, and the underlying content or subject matter remains unchanged; and
- Absent an amendment of the identification, registrant would be forced to delete the original goods or services from the registration, and thus lose protection in the registration in relation to the underlying content or subject matter of the original goods or services.
- Registrant agrees not to file or refile an affidavit or declaration of incontestability under section 15 of the Trademark Act, 15 U.S.C. section 1065, as to the evolved goods or services for at least five years from the date of acceptance of the amendment.
The registrant must also include with the petition:
- The dates of first use;
- The current and proposed Identification of Goods and Services; and
- A specimen showing the use of the registered mark on the new goods and/or services.
This procedure has the potential to save registrants the time and expense of refiling for their marks when their products or services change due to technological evolution. However, filers should be aware they are unable to claim incontestability for the updated goods or services until at least five years from the date the amendments are accepted.
A representative at the USPTO recently indicated this procedure is rarely used and the Trademark Office has only seen a few petitions since the pilot program’s launch in 2015. Therefore, this appears to be an underutilized, cost-effective, and efficient method for maintaining registrations in the U.S.
