The U.S.P.T.O has announced a pilot program to allow petitions to change the identification, post-application, of goods and services in trademark applications. The scope of allowed changes is fairly narrow, applying only to situation where “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….” Nonetheless, it is a major change in USPTO policy, where to the present time, virtually NO changes have been allowed to specified goods and services during application.
Petitions will have to be carefully considered to pass muster. They will only be allowed in an “extraordinary situation” where the “underlying content or subject matter remains unchanged,” and where, absent an amendment, “the petitioner would be forced to delete the original goods/services from the registration, and thus lose protection….” Filing a petition will also require a declaration that the petitioner will not file or refile an affidavit or declaration of incontestability under Section 15 until five years after the acceptance of the amendment. The petition will be conditioned in part on a search for any third parties that might be harmed by the proposed changes.
But in a broad move, the trademark office will also consider petitions that change the filing basis from the sale of goods to the provision of services, as the examples below show.
Along with providing an outline of a suggested (Sample Declaration) declaration, the trademark office suggests some potentially allowable amendments:
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- Changing “phonograph records featuring music” in International Class 9 to “musical sound recordings” in International Class 9.
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- Changing “floppy discs for computers for word processing” in International Class 9 to “providing on-line non-downloadable software for word processing” in International Class 42.
- Changing “downloadable software for use in database management” in International Class 9 to “software as a service (SAAS) services featuring software for use in database management” in International Class 42.
To see these and other examples, along with a detailed description of the new policy, see this PTO Bulletin on the program: (Technology Evolution Pilot Program)