From: Susan Douglass
Sent: Tuesday, October 29, 2013 9:57 PM
Subject: "Technology Evolution" Request for Comments
Thank you for this opportunity to respond to the Request for Comment regarding Technology Evolution.
1. Please identify your relevant background on this issue, including whether you are a trademark owner or practitioner, and the general size and nature of your business or trademark practice, including the number of trademark applications and registrations your business has, or your practice handles.
I am a partner at Fross Zelnick Lehrman & Zissu, P.C., a New York City law firm specializing in trademarks. Lawyers in our approximately 50-lawyer firm have over the years filed over 30,000 trademark applications; I am listed as the attorney for nearly 8,400 applications (although many additional files may not be counted due to typographical errors in the database). In April 2007, I was recognized at a ceremony at the USPTO as the "Most Prolific Electronic Filer" for a law firm. We consistently are recognized by our peers as the leading trademark prosecution firm in the country.
2. Do you think the USPTO should allow amendments to identifications of goods/services in registrations based on changes in the manner or medium by which products and services are offered for sale and provided to consumers?
Yes. So long as the general category of product or service remains the same, the manner or medium of delivery is irrelevant. Indeed, due to the ever-changing nature of technologies, the USPTO should consider whether the medium in which the product or service is offered should be eliminated as a requirement in the description of goods and services on a going-forward basis.
3. If such amendments are permitted, should they only be allowed post registration to account for changes in technology following registration, or should similar amendments be permitted in applications prior to registration (see 37 C.F.R. §2.71(a), stating that prior to registration, an applicant may clarify or limit, but not broaden, the identification)?
The amendments should be permitted in all instances including pending applications since the medium does not affect the likelihood of confusion analysis either for trademark owners or Examining Attorneys.
4. What type of showing should be required for such amendments? Should a special process be required to file such amendments, apart from a request for amendment under §7?
A simple request for amendment can be filed, either under the requirements of Section 7, or as an ordinary amendment or post-publication in a pending application. The applicant or registrant's statement that the amendment is required due to a change or modification of the means and nature of delivery or packaging should be a sufficient showing.
5. Should such amendments be limited to certain goods, services or fields (such as computer software, music, etc.), and if so, how should the determination be made as to which goods, services or fields?
Such amendments should not be limited to specific categories of goods. It is not possible to predict all the fields that will continue to be affected by changes in technology. For example, it does not matter whether retail store services are offered at "brick and mortar" stores, via catalog, telephone order, or online - although these involve Classes 16 or 35. The essence of the services is retail sales, although the type of merchandise remains relevant. Similarly, video content can be delivered by DVD or downloadable MP3 or MP4 (Class 9), or online (Class 41), and the technology continues to change.
6. Should a distinction be made between products that have been phased out (such as eight-track tapes), as opposed to products for which the technology is evolving (such as on-line magazines), or should amendments be permitted for both categories of products?
No distinction should be made as between obsolete technology and evolving technology. The focus should be on the fundamental nature of the product or service, and not the means of delivery or packaging.
7. Do you believe the scope of protection in an identification of goods/services is expanded if an amendment is allowed to alter the medium of the goods/services?
The PTO already applies a rule of interpretation that an unrestricted identification in a registration means that goods are offered in all normal channels of trade for the goods. As a result, the scope of protection afforded many registered marks already encompasses means of delivery of, or access to, the goods that are not specified in the registration. Therefore, generally speaking, altering the medium identified in a registration will not expand the scope of protection already afforded a registration, but it may be possible to think of examples where the medium could play a role in distinguishing products or services.
8. Would the original dates of use remain accurate if such amendments are permitted?
Yes, because it is the product offering (e.g., music, software, retail sales), and not the means of delivery or packaging, that defines the goods or services. If this is of concern, then an amendment stating that the date of first use is associated with an earlier iteration of the product could be added to the record.
9. What would the impact of such amendments be on the public policy objective of ensuring notice of the coverage afforded under a registration?
The public assesses likelihood of confusion based on the nature of the product or service, and not necessarily its means of delivery. With virtually all businesses having an online presence, or at least the ability to order products or services by telephone, very few businesses are limited to a specific means of delivery or presentation. When conducting a search, the fact that, for example, a registration covers music recorded on CDs would raise a red flag for another party planning to offer music via iTunes or another online service, or by means of live performances. In other words, the public is on notice and makes assumptions regarding alternative technologies, as do Examining Attorneys.
The vast majority of the public has no awareness of the specific nature of goods/services identified in a registration. As mentioned above, rules of interpretation already expand the scope of protection afforded a registered mark, both in terms of the rule that the goods are assumed to travel in all normal channels of trade for sale to all normal consumers of the goods (even when the facts are at odds with these assumptions); and in terms of related goods protection. It seems the public would be better served by allowing registrations to be updated to reflect reality rather than to give a potentially misleading impression of the coverage that the trademark owner may be able to claim.
10. Please provide any additional comments you may have.
We appreciate the flexibility shown by the USPTO in considering these amendments. Our clients are frustrated in some cases by their inability to maintain valuable incontestable registrations as they come due for renewal, due to their inability to provide specimens showing antiquated technology. We remain available to provide further input on this topic.
Susan Upton Douglass
/Susan Upton Douglass/
Fross Zelnick Lehrman & Zissu
866 United Nations Plaza
New York, NY 10017
Direct Tel: 212-813-5995