By: Kennington Groff
Lilenfeld PC

Our Client’s federal registrations, which it originally secured in the 1990s, listed “printed charts” as the products used with its trademark. So when our Client switched from paper to digital products, its federal trademark registrations no longer provided the same protections for the updated product. What could be done to help the Client?

On September 1, 2015, the USPTO began a pilot program to allow, under limited circumstances upon petition to the Director, amendments to identifications of goods/services in trademark registrations that would otherwise be beyond the scope of the current identification, but are 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.

As an evolving pilot program, we were able to work with the Director to have Trademark Rule 2.173(e) waived. Trademark Rule 2.173(e) may only be waived “in an extraordinary situation, when justice requires, and no other party is injured.” In our situation, we were able to successfully convert our Client’s trademark registrations, that has been around for over 30 years, in connection with “printed charts,” into a trademark registration for “downloadable charts.” With ever changing technology, the printed materials had become dated. Our Client needed to evolve to stay competitive in a rapidly evolving industry.

In order to show that an extraordinary situation exists, for which for which justice requires a rule waiver, we declared, to the best of our knowledge, that (1) 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, our Client cannot show use on the original goods or services; (2) our Client still uses the mark on other goods or services reflecting the evolved technology, and the underlying content or subject matter remains unchanged; and (3) absent an amendment of the identification, our Client 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.

In considering third-party harm in allowing the amendment, the USPTO performed a new search of the Trademark database of registered and pending marks and identified no marks that might be harmed by the acceptance of the amendment.  As an additional means of reducing the possibility of third-party harm and to provide a mechanism for interested parties to comment about proposed amendments prior to acceptance, the USPTO published the proposed amendment for public comment on the USPTO website and no comments were received.

Currently the pilot program does not have a termination date, but the results of the pilot will help the USPTO determine if it will continue to allow such amendments in the future. Rest assured though that all registration amendments granted under the pilot program are permanent, regardless of the outcome of the program.