With technological advancement, comes the increased need for new rules and regulations regarding trademarks. On September 1, 2015, the United States Patent and Trademark Office (USTPO) began implementing a pilot program called The Technology Evolution Pilot Program. This program makes it possible for trademark owners to expand the trademark registrations of their goods and services. Thus, trademark owners may be permitted to keep their current trademark without having to file a new application if the revised registration of the existing mark is due to a technological advancement of the current mark. This change will enable trademark owners to save the time and money often involved in changing an existing trademark registration.
Other key category changes the Pilot Program will bring include the following:
“Phonograph records featuring music” shall be changed to “Musical sound recordings”
“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”
“Downloadable software for use in database management” to “Software as a service (SAAS) featuring software for use in database management”
“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”
“Entertainment services, namely, an ongoing comedy series provided through cable television” to “Entertainment services, namely, an ongoing comedy series broadcast via the Internet”
According to the USTPO, this list of amendments will continue to change as new technology becomes available. An updated list will be posted to their website as updates occur. The website currently contains a variety of examples of unacceptable category changes as well, such as:
“Downloadable software for use as a spreadsheet in the field of accounting” to “Providing on-line non-downloadable software for use as a spreadsheet in the field of business management”
The reason given for the exclusion of this amendment is due to the changes in the field from accounting to business.
“Video game tape cassettes and video game cartridges” to “Video game discs and video game cartridges”
In the example immediately above, that category change is unacceptable because although the trademark owner is no longer using the mark on video game cassettes, he is still using the mark on video game cartridges. Under the old system, this change would require the trademark owner to file a new application. However, under the new system, the trademark owner will simply amend the existing registration for video game discs and the current petition will cover the original as well at the item that requires an expanded definition.
The USTPO has very stringent rules and regulations that apply to what will be allowed and what will not be allowed under the Pilot Program. In these early stages of the Pilot Program, many changes are expected to occur. If you believe your mark will be affected by these new amendments, then you should contact a business attorney who specializes in trademark law. This Pilot Program has been implemented to help trademark owners to ensure that their trademarks are covered even as technology continues to advance.
References:
1. “Pilot Program-United States Patent and Trademark Office.”Www.uspto.gov/sites/default/files/documents/Technology_Evolution_Pilot_Program.docx. United States Patent and Trademark Office, n.d. Web. 17 Dec. 2015.
2. “USPTO Pilot Program: Trademark Registrations May Now Be Broadened To Account For Evolving Technology | IP Intelligence.” IP Intelligence. Baker & Hostetler LLP, 09 Sept. 2015. Web. 17 Dec. 2015. .
3. “Technology Evolution Pilot Program | Brinks Gilson & Lione.” Technology Evolution Pilot Program | Brinks Gilson & Lione. Brinks Gilson Lione, 14 Sept. 2015. Web. 17 Dec. 2015. .
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