Names are important, particularly when they represent a brand name. Even smaller businesses put a lot of money, blood, sweat and tears in to their brand names. Costs associated with a brand name might include expenditures on labeling, advertising, promotion, graphic design, signage and fees associated with federal and state trademark registration.
If your business has ever filed an application with the U.S. Patent and Trademark Office to register your trademark/brand name, then you might be aware that it’s a bit tricker than it looks at first glance (e.g. see our prior posts here and here). One reason is that, with few exceptions, the way that you describe your goods/services in the application cannot be changed once the application is filed. Unfortunately, applicants often learn that their initial description isn’t workable or broad enough until it’s too late. And having to file an entire new trademark application to correct a mistake in a prior-filed application increases costs and delays registration of the mark. Another problem is that applicants often cannot foresee future technology changes that can render their current goods/services description obsolete.
While not a panacea, as of September 1, 2015, the USPTO launched a new pilot program that might help a bit. Under the new program, the USPTO relaxed some of the rules for post-registration amendments to the description of goods or services.
According to the USPTO, the new pilot program allows applicants, under limited circumstances, to make amendments to the identification of goods/services in trademark registrations that would otherwise be beyond the scope of the current identification. Note that the rule pertains to registrations at this point.
Under the new pilot program, the USPTO might allow amendments upon petition to the Director (under Trademark Rule 2.146, 37 C.F.R. §2.146). The caveat is that, to be allowed, the amendments must be deemed necessary because “evolving technology has changed the manner or medium by which the underlying content or subject matter of the identified products and services are offered for sale or provided to consumers.” More specifically, the USPTO states that:
This piloted change in trademark practice takes into account the policy goal of preserving trademark registrations in situations where technology in an industry has evolved in such a way that amendment of the goods/services in question would not generate a public-notice problem. The duration of the pilot will depend on the volume of requests.
For further info on the pilot amendment program, see the fact sheet below. As always, you should consult with your attorney and consider the USPTO program in further detail as to whether the program is appropriate for your particular needs.
Fact Sheet on the USPTO’s New Pilot Amendment Program For Trademark Registrations:
- Amendments will be permitted post-registration upon petition to the Director under Trademark Rule 2.146, 37 C.F.R. §2.146. During the pilot period, amendments will not be permitted prior to registration.
- The petition procedures only apply to amendments not permitted under current practice because they would be considered to be beyond the scope of the current identification. Amendments permitted under current practice remain unaffected by these procedures. For example, a petition would not be necessary for an amendment from “newsletters in the field of accounting” in International Class 16 to “providing on-line newsletters in the field of accounting” in International Class 41 because, regardless of the change in classification, such an amendment falls within the scope of the original wording, and would be permitted under current practice. See TMEP §1402.07(c).
- In the proposed amendment, the existing goods/services for which the petitioner is no longer able to show use must be replaced with the goods/services in their evolved form.
- Amendments will only be permitted in situations where the registrant is no longer able to show use of the mark with the goods/services in their original form due to evolving technology. If the registrant is continuing to use the mark with the goods/services in their original form, a new trademark application may be filed in order to seek registration for the evolved goods/services.
- Amendments that change the classification of the goods/services and change the identification from goods to services (or vice versa) may be considered. However, proposed amendments must comply with all applicable rules and requirements, including current requirements regarding specificity and classification.
This post is intended to convey general information only and should not be construed as a legal opinion or legal advice. Any opinions expressed are our own. Readers should not take any action, or refrain from taking any action, based upon the information contained in our site and posts, but should consult with their own attorney concerning their own situation and their specific legal questions. Visiting our website, reading posts and/or posting comments does not establish any form of attorney-client relationship with us.