Starting September 1, the U. S. Patent and Trademark Office (USPTO) has instituted a pilot program to help you preserve your trademark registration if new technology replaces the format under which the underlying goods or services identified under the registration are offered for sale or provided to consumers.
Your company’s trademark can be its most enduring asset, which can potentially far outlive any particular physical asset owned by the company. Yet, in today’s world, technological advancements can significantly change the nature and form of a company’s goods and services delivered to customers.
One stark example has been the evolution of the marketing of music. Many of us remember that music was produced on vinyl records. Music is now predominantly marketed in electronic format. For those “record” companies that are still fortunate enough to be around, they likely have trademark registrations for goods covering music in the physical form of vinyl records. Those registrations likely date back several decades and would represent a substantial amount of goodwill. But given that trademark registrations are limited to the goods and services specifically described therein, the evolution from vinyl records to an electronic medium could render those old registrations invalid if the identification of the covered goods was limited to that physical form. That is, the registrations would not be considered to cover the new technology which, among other formats, might include electronic media such as digital files and compact discs.
Similar problems can exist for software companies, who may have in the past provided packaged software but switched to offering software as a service (SAAS). The identification of the software goods as “floppy discs” in an existing registration would be of a different scope than the intangible SAAS services to which the subject matter may have evolved. Accordingly, the original registration likely would not cover the different format (or delivery logistics) of the software. Thus, an existing registration covering the antiquated “floppy discs” software format could be rendered useless.
While a new registration for the trademark covering the evolved goods or services could simply be filed, the rights and remedies of such a new registration would only begin on the filing date. The new registration would have to stand on its own and the significant benefits of the existing registration could be lost.
The U.S. Patent and Trademark Office (USPTO), recognizing this as an otherwise unfortunate consequence of the advancement of technology, has initiated a pilot program whereby an existing registration could be amended to replace the identification describing the format of the old goods or services with an identification that more accurately describes the new goods/services format. Certain restrictions against expanding the scope of goods and services would still apply, however. Also, if the original scope of goods and services under the registration were still being marketed by the registration owner, the registration would not be eligible for expansion under this pilot program. In that case, the owner would simply have to file for additional registration coverage for the new technology.
Using the USPTO pilot program, a registration owner can maintain its original registration and not lose the priority in the very valuable trademark rights it achieved. In so doing, one’s trademark rights can keep step with the advancement of technology.
This blog post was drafted by Glenn Robbins, an attorney at Spencer Fane’s St. Louis, MO office. For more information, visit spencerfane.com.