USPTO Pilot Program Evolving Technology

The USPTO has recently launched a new pilot program that allows amendments to an existing trademark’s goods and services in order to account for changes in technology. This program is meant to address instances where companies can no longer prove that a mark is currently used in the technology format identified in the original trademark registration as a result of evolving technology that has changed the manner or medium by which the goods and services are provided to consumers. Industries such as banking, entertainment, music, technology/software, and publishing are most likely to benefit from this pilot program. The duration of the program will be dependent on the number of requests received by the USPTO. At the conclusion of the program, the USPTO will assess whether to implement the program on a permanent basis.

The USPTO has imposed strict parameters on amending a registration on the grounds of evolving technology. Some key features of the program are as follows:

  1. Amendments are only permitted post-registration via a petition to the Director.
  2. Amendments must relate to the goods or services for which the registrant can no longer show use due to evolving technology.
  3. The amendment must replace the existing goods or services for which use can no longer be shown with the goods and services in their evolved form.
    1. If a registrant continues to use the mark with the goods and services in their original form, the registrant must file a new trademark application to seek registration for the evolved goods and services.

A consequence of amending the goods and services on the grounds of evolving technology is that the mark will lose any status it had as incontestable under the original goods and services designation. The clock determining incontestability will restart on the date of acceptance of the amendment and the registrant will not be able to file for incontestability until at least five years from the date of acceptance.

While the USPTO will post a non-exhaustive list of acceptable amendments under the program, outlined below are some examples of amendments it has deemed to be acceptable:
  1. "Prerecorded video cassettes in the field of mathematics instruction" in international class 9 to "video recordings featuring mathematics instruction" in international class 9.
  2. "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.
  3. "Printed books in the field of art history" in international class 16 to "downloadable electronic books in the field of art history" in international class 9.
  4. "Entertainment services, namely, an ongoing comedy series provided through cable television" in international class 41 to "entertaining services, namely, an ongoing comedy series broadcast via the Internet" in international class 41.


To learn more, please contact Chappano Wood at cwpll@cwpll.com or (614) 228-4422. These materials are provided by Chappano Wood PLL for informational purposes only, and do not constitute legal advice. An attorney-client relationship is not created by visiting this Website or by sending us e-mail. Internet subscribers and online readers with legal problems should not act upon this information without seeking professional counsel.

Internet subscribers and online readers with legal problems should not act upon this information without seeking professional counsel.

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Last updated 18-Jan-2016.