What do phonograph records, cassette tapes, CDs, and downloadable mp3 files have in common? They are all products whose trademarks are registered in class 9 (class 9 covers scientific and electronic goods). They also embody sound recordings on media that are in varying stages of obsolescence. Forty years ago, a record company may have sold music on phonograph records but today sells them as downloadable mp3 files. The product, music, is the same – only the format has changed.
The U.S. Patent and Trademark Office (USPTO) created a pilot program to accommodate these changes in technology. Under the pilot program trademark owners can amend their descriptions of goods so that the descriptions match the new technology. The pilot program may only be used if a trademark is no longer used on the registered goods due to changes in technology. For instance, if a mark is registered for cassette tapes, but audio recordings are now provided through streaming, the description of cassettes tapes may be replaced to describe those recordings provided through a streaming service.
Prior to the launch of this program, the trademark owner had no option but to abandon the registration if the mark was no longer used on obsolete goods. Filing a new application was the only way to preserve trademark protection for the new goods. The pilot program allows the registrant to avoid the time and expense of a new application, while also preserving the original priority date.
All amendment requests under the pilot program must meet specific requirements. This includes the USPTO searching its database for harm to existing registrations. The amendment will also be published and subject to comment from third parties.
It is unclear if the pilot program will be available on a permanent basis. When the pilot program ends the USPTO will determine whether or not to make the procedures permanent. An end date for the pilot program has not been announced. If you own a trademark registration with obsolete goods, you should consider taking advantage of the pilot program as soon as possible so that you do not miss this opportunity to preserve your registration. Please contact us if we can help you with amending your registration under the pilot program.
This article is provided for general information and is not intended to be legal advice for any specific situation. If you are in need of specific advice or legal representation, please do not hesitate to contact us.
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