Not Just Patents®

Aim Higher® Facts Matter

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418

1-651-500-7590

WP@NJP.legal



Updating Your Trademark Registration

When Technology Evolves By Means, Method or Format

Decrease Your Vulnerability to Cancellation


The United States Patent and Trademark Office (USPTO) recognizes that technology is always evolving and offers a limited program to amend existing registrations beyond what Rule 2.173(e)* allows. If your goods or services have evolved to an updated means, method or format but you provide the same fundamental goods/services these goods or services, you may be able to update your existing registration without filing a new application.


Example: “Printed children’s books”may be eligible to evolve to “downloadable electronic children’s books” if you no longer provide the books in a printed format.


More examples of acceptable and unacceptable amendments

Acceptable amendments

Original: “Phonograph records featuring music” (International Class 9)

Amended: “Musical sound recordings” (International Class 9)

 

Original: “Prerecorded video cassettes in the field of mathematics instruction” (International Class 9)

Amended: “Video recordings featuring mathematics instruction” (International Class 9)

 

Original: “Floppy discs for computers for word processing” (International Class 9)

Amended: “Providing on-line non-downloadable software for word processing” (International Class 42)

 

Original: “Downloadable software for use in database management” (International Class 9)

Amended: “Software as a service (SAAS) services featuring software for use in database management” (International Class 42)

 

Original: “Printed books in the field of art history” (International Class 16)

Amended: “Downloadable electronic books in the field of art history” (International Class 9)

 

Original: “Telephone banking services” (International Class 36)

Amended: “On-line banking services” (International Class 36)

 

Original: “Entertainment services, namely, an ongoing comedy series provided through cable television” (International Class 41)

Amended: “Entertainment services, namely, an ongoing comedy series broadcast via the Internet” (International Class 41)

 


You are eligible to participate if you meet all of the following requirements:

  • You own a registered trademark
  • You provide goods/services in their evolved form with the same underlying content or subject matter as the original goods/services
  • You no longer provide the original form of your goods/services
  • You no longer provide any goods/services identified in your registration that contain the same underlying content


You are not eligible to amend (could require a new application) if:

  • You still use the mark on the original goods/services or on other goods/services identified in the registration containing the same underlying content.

For example, if your registration identifies your goods as “phonograph records and audio tapes featuring music,” you would not be eligible to amend the goods to “phonograph records and compact discs featuring music.” This is because you still provide phonograph records, which have the same underlying content as your evolved goods.  Instead, you would need to delete the goods/services that are no longer in use from the registration and file a new application to seek registration of your mark for the evolved goods/services.


You may not NEED a special amendment if the identification of goods/services in your registration is broad enough to include your evolved goods/services.

  • For example, if your registration identifies your goods as “newsletters in the field of accounting” (International Class 16), it can be amended to “providing on-line newsletters in the field of accounting” (International Class 41) without a request under the pilot program. Instead, you can file a Section 7 request to narrow the scope of your goods/services. Preview the section 7 form here.  See TMEP §1402.07(c) for more information.



Incontestable status

If your mark has incontestable status, it will not be transferred to your amended goods/services. You may not file or refile for incontestability for five years following the approval date of your amendment.


How do I Know If I Need to do This? Email WP@NJP.legal or call Not Just Patents® at 1-651-500-7590 and ask!


Examples of acceptable and amendments under limited program:

Acceptable amendments

Original: “Phonograph records featuring music” (International Class 9)

Amended: “Musical sound recordings” (International Class 9)

 

Original: “Prerecorded video cassettes in the field of mathematics instruction” (International Class 9)

Amended: “Video recordings featuring mathematics instruction” (International Class 9)

 

Original: “Floppy discs for computers for word processing” (International Class 9)

Amended: “Providing on-line non-downloadable software for word processing” (International Class 42)

 

Original: “Downloadable software for use in database management” (International Class 9)

Amended: “Software as a service (SAAS) services featuring software for use in database management” (International Class 42)

 

Original: “Printed books in the field of art history” (International Class 16)

Amended: “Downloadable electronic books in the field of art history” (International Class 9)

 

Original: “Telephone banking services” (International Class 36)

Amended: “On-line banking services” (International Class 36)

 

Original: “Entertainment services, namely, an ongoing comedy series provided through cable television” (International Class 41)

Amended: “Entertainment services, namely, an ongoing comedy series broadcast via the Internet” (International Class 41)


Unacceptable amendments

Original: “Downloadable software for use as a spreadsheet in the field of accounting” (International Class 9)

Amended: “Providing on-line non-downloadable software for use as a spreadsheet in the field of business management” (International Class 42)

Why it’s unacceptable: The subject matter of the spreadsheet software has changed from accounting to business management.

 

Original: “Printed magazines in the field of finance” (International Class 16)

Amended: “Printed magazines in the field of finance” (International Class 16) and “Providing on-line magazines in the field of finance” (International Class 41)

Why it’s unacceptable: The petitioner is still using the goods in their current form. The petitioner may file a new trademark application for the services in International Class 41.

 

Original: “Phonograph records featuring music” (International Class 9)

Amended: “Streaming of audio material in the nature of music” (International Class 38)

Why it’s unacceptable: The underlying goods/services have changed. The petitioner originally provided musical recordings, but now provides a service that transmits music.  An amendment would be permitted from “phonograph records featuring music” in International Class 9 to “providing on-line music, not downloadable” in International Class 41, which is a service of providing content in a new manner, i.e., “on-line.”

 

Original: “Video game tape cassettes and video game cartridges” (International Class 9)

Amended: “Video game discs and video game cartridges” (International Class 9)

Why it's unacceptable: Although the petitioner is no longer using the mark on "video game tape cassettes," the petitioner is still using the mark on "video game cartridges." Without the amendment, the petitioner would not lose protection in relation to the underlying content of the original goods. The petitioner may file a new trademark application for "video game discs" in International Class 9.



* Trademark Rule 2.173(e)*, 37 C.F.R. §2.173(e)    Amendment of registration

(a) Form of amendment. The owner of a registration may apply to amend a registration or to disclaim part of the mark in the registration. The owner must submit a written request specifying the amendment or disclaimer. If the registration is involved in an inter partes proceeding before the Trademark Trial and Appeal Board, the request must be filed by appropriate motion to the Board.

(b) Requirements for request. A request for amendment or disclaimer must:

(1) Include the fee required by § 2.6;

(2) Be verified and signed in accordance with § 2.193(e)(6); and

(3) If the amendment involves a change in the mark: one new specimen per class showing the mark as used on or in connection with the goods, services, or collective membership organization; a verified statement that the specimen was in use in commerce at least as early as the filing date of the amendment; and a new drawing of the amended mark. When requested by the Office, additional specimens must be provided.

(4) The Office may require the owner to furnish such specimens, information, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the amendment.

(c) Registration must still contain registrable matter. The registration as amended must still contain registrable matter, and the mark as amended must be registrable as a whole.

(d) Amendment may not materially alter the mark. An amendment or disclaimer that materially alters the character of the mark will not be permitted, in accordance with section 7(e) of the Act.

(e) Amendment of identification of goods, services, or collective membership organization. No amendment in the identification of goods or services, or description of the nature of the collective membership organization, in a registration will be permitted except to restrict the identification or to change it in ways that would not require republication of the mark.

(f) Amendment of certification statement for certification marks. An amendment of the certification statement specified in § 2.45(a)(4)(i)(A) or (a)(4)(ii)(A) that would materially alter the certification statement will not be permitted, in accordance with section 7(e) of the Act.

(g) Conforming amendments may be required. If the registration includes a disclaimer, description of the mark, or other miscellaneous statement, any request to amend the registration must include a request to make any necessary conforming amendments to the disclaimer, description, or other statement.

(h) Elimination of disclaimer. No amendment seeking the elimination of a disclaimer will be permitted, unless deletion of the disclaimed portion of the mark is also sought.

(i) No amendment to add or delete section 2(f) claim of acquired distinctiveness. An amendment seeking the addition or deletion of a claim of acquired distinctiveness will not be permitted.




_____________________________________________________________________

Do you still have old technology, not in use, on your trademark registration? Email us at WP@NJP.legal with your registration number for a quote on evolving your trademark registration or filing a new application.



EvolvedMMF.com

Evolved means, method, or format



Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Evolved Means, Method or Format-Is your trademark registration obsolete?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®  ApplyTM.com

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

Decrease Your Vulnerability to Cancellation

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


©2008-2017 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us